Applebee’s Inter-national, Inc.v.Societe Des Produits Nestle S.A.

Trademark Trial and Appeal Board

Sep 11, 2003

No. 91111517 (T.T.A.B. Sep. 11, 2003)

Mailed: September 11, 2003
Hearing:
Paper No. 61
June 11, 2003 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Applebee’s International, Inc.
v.
Societe Des Produits Nestle S.A., by
Assignment from The Stouffer Corporation
_____
Opposition No. 111,517
to application Serial No. 75/301,628
filed on June 2, 1997
_____
J. David Wharton and Constance M. Jordan of Stinson Morrison
Hecker LLP for Applebee’s International, Inc.
Robert V. Vickers of Vickers, Daniel, and Young for Societe
Des Produits Nestle S.A.
______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Societe Des Produits Nestle S.A., a Swiss corporation,
seeks to register SKILLET SENSATIONS as a trademark for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 111,517
2
“frozen prepared dinner mix consisting of meat, vegetables
and potatoes with rice or pasta.”1
Registration has been opposed by Applebee’s
International, Inc. under Section 2(d) of the Trademark Act.
Specifically, opposer alleges that since long before the
filing date of applicant’s application, opposer has been
engaged in the restaurant, bar and carry-out food business;
that opposer is presently the nation’s largest casual dining
restaurant chain; that opposer has, since prior to the
filing date of applicant’s application, used the trademark
SKILLET SENSATIONS in stylized form for prepared entrees
served in restaurants consisting primarily of meats, poultry
or fish with vegetables; that opposer has filed an
application to register SKILLET SENSATIONS for prepared
entrees served in restaurants consisting primarily of meats,
poultry or fish with vegetables, Serial No. 75/308,648,
filed June 17, 1997, with a claimed first use date in
interstate commerce of November 4, 1996; that since November
4, 1996, opposer has made continuous use of the mark SKILLET
SENSATIONS; that action on opposer’s application has been
suspended pending disposition of applicant’s involved
1 Application Serial No. 75/301,628, filed June 2, 1997, based on
an allegation of a bona fide intention to use the mark in
commerce. The word “SKILLET” has been disclaimed apart from the
mark as shown. Although the application was filed by The
Stouffer Corporation, it was assigned to Societe Des Produits
Nestle S.A. The assignment has been recorded with the Assignment
Branch of the U.S. Patent and Trademark Office at Reel 1887,
frame 0631.
Opposition No. 111,517
3
application which bears an earlier filing date than
opposer’s application; and that applicant’s mark, if applied
to the identified goods, so resembles opposer’s mark SKILLET
SENSATIONS as to be likely to cause confusion.
Applicant, in its amended answer, denied the salient
allegations of the notice of opposition. Further, as
affirmative defenses, applicant asserted that opposer has
abandoned the mark SKILLET SENSATIONS in stylized form which
is the subject of opposer’s pending application S.N.
75/308,648; that opposer does not have prior use of SKILLET
SENSATIONS in block letters; and that “[o]pposer has not
used the words ‘skillet sensations’ as a trademark by merely
using such words to describe a meal prepared and served by a
restaurant in a skillet.”
Outstanding Motions and Evidentiary Matters
Before turning to the merits of the case, there are
several outstanding motions and evidentiary matters we must
resolve.
On February 19, 2002, applicant filed a paper styled
“Motion to add exhibits.” The motion is actually a motion
to reopen applicant’s testimony period in order to introduce
copies of opposer’s 2002 and Fall 2001 menus. Applicant
states that it believed opposer would introduce copies of
the menus during opposer’s rebuttal testimony period, thus
making it unnecessary for applicant to introduce the menus
Opposition No. 111,517
4
during its testimony period. However, according to
applicant, opposer did not do so, and “[t]his change of
tactics precluded applicant from introducing the new
Applebee’s menus.”
Opposer has filed a brief in opposition to the motion
on March 12, 2003.
As opposer points out in its brief, menus are not the
type of materials which may submitted by notice of reliance.
See Trademark Rule 2.122(2)(e). Further, applicant may not
rely on the fact that opposer did not introduce the menus
during opposer’s testimony period in order to excuse
applicant’s failure to introduce the evidence during its own
testimony period. In view of the foregoing, applicant’s
motion to reopen its testimony period for this purpose is
denied.
On May 15, 2003, opposer filed a motion to reopen its
testimony period in order to introduce newly discovered
evidence, namely a letter sent by applicant’s Canadian
counsel to opposer wherein it is asserted that opposer’s use
of SKILLET SENSATIONS in Canada infringes applicant’s
Canadian registration for the mark SKILLET SENSATIONS for
frozen meals. Opposer states that it received the letter on
March 11, 2003, and thus was unable to make it of record
during its testimony period; and that the letter should be
considered an admission against interest.
Opposition No. 111,517
5
Applicant, in opposition to the motion, contends that
the motion to reopen is untimely and that the letter is
irrelevant because it pertains to a controversy in a foreign
country.
We find applicant’s opposition to the motion to reopen
to be well-taken. Inasmuch as the letter pertains to the
use of SKILLET SENSATIONS outside the United States, it has
no bearing on this proceeding. In view thereof, opposer’s
motion to reopen its testimony period for this purpose is
denied.
Applicant has moved to strike the portions of the
discovery depositions of opposer’s employees Liz Holmes and
Robert T. Steinkamp, which were submitted by way of
opposer’s rebuttal notice of reliance. Applicant argues
that Fed. R. Civ. P. 32(a) provides that such discovery
depositions may be used only by applicant, the adverse
party. However, Trademark Rule 2.120(j(4) provides that if
only part of a discovery deposition is submitted and made
part of the record by a party entitled to offer the
deposition in evidence, an adverse party may introduce under
a notice of reliance any other part of the deposition which
should in fairness be considered so as to make not
misleading what was offered by the submitting party. In
this case, since applicant relied upon portions of the
discovery depositions of Ms. Holmes and Mr. Steinkamp,
Opposition No. 111,517
6
opposer is allowed to introduce portions which it believes,
in fairness, should be considered. In view thereof,
applicant’s motion to strike the portions of the discovery
depositions relied on by opposer is denied.
Further, applicant has moved to strike the portions of
the discovery depositions of Paul DeVries and Angelo
Iantosca, which were submitted by way of opposer’s notice of
reliance, as “improper use of discovery depositions.”
Applicant, however, has failed to state what is “improper”
about the “use” of portions of these discovery depositions.
Trademark Rule 2.120(j)(1) provides that the discovery
deposition of a party or anyone who, at the time of taking
the deposition, was an officer, director, or managing agent
of a party, may be offered in evidence by any adverse party.
Inasmuch as Mr. DeVries and Mr. Iantosca are officers of
applicant, opposer is permitted to offer into evidence
portions of these discovery depositions. In view thereof,
applicant’s motion to strike the portions of the discovery
depositions is denied.
Opposer made many objections during the testimony
depositions of applicant’s witnesses, all of which it has
“reserved” in its brief. These objections are obviously too
numerous to allow individual rulings thereon. In reading
the record, we considered the testimony and accompanying
exhibits in light of opposer’s objections. Where we have
Opposition No. 111,517
7
relied on testimony or exhibits to which an objection was
raised, it should be apparent to the parties that in doing
so, we implicitly considered the material to be admissible.
Lastly, both parties have designated many of their
evidentiary submissions, including a number of testimony
depositions in their entireties, as confidential. The
parties were advised in the Board’s June 29, 2001 order
(page 6, fn. 3) to file under seal only those portions of
the evidence that is truly confidential matter. It is
apparent that some of this information is not truly
confidential because the parties have referred it in their
briefs, and no portions of the briefs were designated as
confidential. In any event, and keeping in mind the
parties’ stipulated protective agreement, we have made every
effort not to disclose information that would be considered
proprietary or confidential.
The Record
The record therefore consists of the following: the
file of the involved application; the testimony depositions
of opposer’s witnesses Robert J. Reeder, Randy T. Webb, and
Robert T. Steinkamp (with exhibits); portions of the
discovery depositions of Radhika Zaveri, Angelo Iantosca,
Paul Bakus, Liz Holmes, Robert T. Steinkamp, Karen Eadon,
and Paul DeVries (with exhibits); certain of applicant’s
Opposition No. 111,517
8
responses to opposer’s interrogatories; and dictionary
excerpts submitted by way of opposer’s notice of reliance.
Applicant submitted the testimony depositions of its
witnesses Tyrone O. Albert, Steven Luebkeman, William J.
O’Connor; Paul DeVries; Brett A. White, Jack D. Wyatt,
Angelo Iantosca, and Gregory S. Vickers (with exhibits); six
notices of reliance on portions of the discovery depositions
of Liz Holmes, Randy Webb, Robert Steinkamp, Karen Eadon,
and Julia Stewart (with exhibits); copies of third-party
registrations; and the file wrapper and contents of several
applications. In addition, various documents and materials
were submitted pursuant to the parties’ stipulation.
Both parties filed briefs on the case and were
represented by counsel at an oral hearing held before the
Board.
Non-pleaded Ground
Opposer, in its brief on the case, seeks to assert an
additional ground for opposition, namely that the involved
intent-to-use application is void ab initio because the
assignment from The Stouffer Corporation to Societe Des
Produits Nestle S.A. was impermissible. Opposer maintains
that 15 U.S.C. §1060 requires that where an intent-to-use
application is assigned prior to the filing of a verified
statement of use, there must be evidence that the assignee
succeeded to the business of the assignor. Opposer contends
Opposition No. 111,517
9
that there is no evidence that Societe des Produits Nestle
S.A. succeeded to the business of The Stouffer Corporation.
Opposer states that it learned of the basis for this ground
during the testimony of applicant’s witness Jack Wyatt.
Applicant, on the other hand, argues that opposer
should not be permitted to assert the ground for opposition
at this late stage of the proceeding. Further, applicant
argues that even if opposer had asserted the ground in a
timely manner, such ground is not well-taken. Applicant
states in its brief, at p. 22:
Even if the claim were properly pleaded, however,
[o]pposer has not carried its burden of proof.
The subject application was filed by [a]pplicant
June 2, 1997 based upon an intent to use. On
February 24, 1998, the mark was published for
opposition. Once that occurred, it was too
late to file an amendment to allege use, yet
it was too soon to file a verified Statement
of Use. Significantly, on June 22, 1998 a use
application was filed by [a]pplicant for the
same mark. On March 29, 1999, [a]pplicant
assigned both applications, along with almost
all of the other Stouffer trademarks to a
related holding company, Societe des Produits
Nestle, S.A. (footnote omitted).
Although opposer states that it learned of the basis
for this ground during the testimonial deposition of
applicant’s witness Jack Wyatt, opposer did not seek leave
to amend the notice of opposition during trial to plead the
ground. Moreover, we conclude that this issue was not tried
with the implied consent of applicant, because the record
does not show that applicant was fairly apprised, during the
Opposition No. 111,517
10
trial period, that opposer intended to assert this
additional ground for opposition. See, in this regard, TBMP
§507.03(b) (2d ed. June 2003) and cases cited therein.
Opposer’s cross-examination of Mr. Wyatt was not of a nature
so as to put applicant on notice that opposer intended to
assert that applicant’s involved application was void ab
initio as the result of the assignment.2
Thus, the grounds for opposition in this case are
limited to priority of use and likelihood of confusion.
Priority
We consider first the issue of priority of use.
An applicant, in the absence of any evidence, is limited to
the filing date of the application as the earliest use of
the mark on which it may rely. See Safe-T-Pacific Co. v.
Nabisco, Inc., 204 USPQ 307 (TTAB 1979). As previously
2 We should point out that it appears from the record that
Societe des Produits Nestle, S.A. was not a successor-in-interest
to the business of The Stouffer Corporation as required by 15
U.S.C. §1060. Thus, had the ground been timely pleaded, it may
have barred registration of the involved application. See e.g.,
The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1106 (TTAB
1996). [“Accordingly, the assignment to respondent, prior to the
filing of the verified statement of use, of the intent-to-use
application which matured into the registration at issue was not
only invalid under Section 10 of the statue, since there was no
transfer to respondent of the assignor’s ongoing and existing
business under the [involved] mark, but the resulting
registration for such mark was also rendered void”].
Opposition No. 111,517
11
indicated, applicant’s intent-to-use application was filed
June 2, 1997. However, in this proceeding, applicant
asserts that two in-home use tests conducted on its behalf
in January 1997 and March 1997 “constituted dates of use,”
and that it has “ … A Priority Date.” (Brief, pp. 24-25).
Further, applicant argues that to the extent that opposer
used the mark SKILLET SENSATIONS in stylized form, it has
now abandoned the mark. Thus, applicant maintains that it
has priority.
Opposer, on the other hand, claims first use of the
mark SKILLET SENSATIONS in block letters and stylized form
in November 1996 and continuous use of the mark since that
date. Further, opposer argues that it has priority because
applicant has not established a date of actual use earlier
than June 2, 1997, the filing date of applicant’s intent-to-
use application.
Opposer’s evidence
Opposer took the testimony of Robert J. Reeder, who
from 1994 to January 2000 was employed by opposer, first as
a franchise marketing consultant, and later as manager of
print production. According to Mr. Reeder, Apple South,
opposer’s largest franchisee, first conducted a “Skillet
Sensations” promotional campaign in November 1996. Mr.
Reeder testified that the original idea for the campaign was
“a collaborative effort between opposer and Apple South.”
Opposition No. 111,517
12
According to Mr. Reeder, it was Apple South who came up with
the name “Skillet Sensations” for the campaign and it was
Apple South’s advertising agency that developed the
advertising for the campaign. Opposer also took the
testimony of Randy Webb, its Research and Development
Manager and Executive Chef, who testified that Apple South
contacted him in 1996 prior to launching the “Sensational
Skillets” campaign.
The November 1996 “Skillet Sensations” campaign was
promoted by way of some 3.7 million freestanding inserts
which were placed in newspapers; over 40,000 table tents
which were displayed on tables at the approximately 200
participating restaurants; and by way of radio and
television advertisements.
A review of the materials used in this campaign reveals
that the inside pages of the newspaper insert depicted
SKILLET SENSATIONS in the stylized form shown below,
(hereinafter referred to as SKILLET SENSATIONS in stylized
form) surrounded by four entrees named “Sicilian Skillet,”
“N’Awlins Skillet,” “Tex-Mex Skillet,” and “Pepper Steak
Skillet.” Also, the back page of the insert shows pictures
of gift certificates and the following wording:
Opposition No. 111,517
13
Always give a gift that you’d enjoy getting.
How about giving someone the opportunity to
try one of our new Skillet Sensations, or any
other delicious dish from the menu. Maybe
they’ll return the flavor. ….
The table tent depicts SKILLET SENSATIONS in stylized form
with pictures of four entrees and the corresponding names.
The television advertisement depicts SKILLET SENSATIONS in
block letters, with an announcer saying the words “SKILLET
SENSATIONS”.
In view of the success of the November 1996 Apple South
campaign, opposer launched a national “Skillet Sensations”
promotional campaign in its Applebee’s restaurants in April
and May 1997. As ways of promoting this campaign, opposer
used table tents, promotional menus, and in-store posters.
These materials depict SKILLET SENSATIONS in block and
slightly stylized letters. In addition, opposer used in its
restaurants metal lids over the SKILLET SENSATIONS entrees
when served to customers. The metal lids had SKILLET
SENSATIONS imprinted thereon in block letters.
Mr. Reeder testified that the April/May 1997 national
campaign was a success in terms of increased sales and
“traffic.” As a result of the success of this campaign,
SKILLET SENSATIONS entrees were placed on opposer’s menus as
regular items. Opposer used SKILLET SENSATIONS in block and
slightly stylized letters in its Spring 1998, Fall 1998 and
1999 menus. Opposer’s Spring 2000 and Fall 2000 menus carry
Opposition No. 111,517
14
the heading “GRILLS & SKILLET SENSATIONS” in block letters
along with an expanded list of entrees. A special menu used
by opposer in 2001 carries the heading “Fiesta del Grill”
with one of the entrees being “Southwest Steak Skillet” and
the following language:
Experience one of our Skillet Sensations™
with 11 ounces of grilled sirloin steak …
Also, since 1999 the menu appearing at opposer’s home page
has included the heading SKILLET SENSATIONS and a list of
entrees.
Opposer also took the testimony of Robert Steinkamp,
its vice-president, general counsel and corporate secretary.
He identified a copy of the standard franchise agreement
used by opposer with its franchisees, including Apple South.
Mr. Steinkamp testified that under the terms of the
agreement, “[o]pposer has taken the position that all
products are to be sold or offered under [opposer’s]
trademarks.” (Dep., 18). He also pointed to Section 8.5 of
the franchise agreement, which states that “all advertising
copy and other materials employed by Franchisee in local
promotional activities shall … receive the prior approval of
Franchisor.” In addition, he testified that opposer has
sold sauces, seasonings and marinades in grocery stores
under the “Applebee’s” trademark. Opposer discontinued
selling these products around 1997-1998 because of problems
with the manufacturer of the products.
Opposition No. 111,517
15
Applicant’s evidence
Applicant took the testimony of Steven Luebkeman,
senior vice-president of A. C. Nielson BASES, a marketing
research company that specializes in sales forecasting for
new products. Applicant retained this company to conduct a
study to project sales for applicant’s new frozen dinner
mix. The study was conducted by interviewing consumers at
shopping malls in approximately twenty cities between the
period of January 13-January 20, 1997. The consumers were
told about applicant’s new frozen dinner mix and shown a
card with seven possible names for the product, including
SKILLET SENSATIONS. An “in-home use” test was conducted in
that if a consumer expressed interest in the product, the
consumer was given a sample product to take home and use.
The consumer was then telephoned to determine his or her
opinion of the product.
Applicant also took the testimony of Tyrone O. Albert,
president of Guidelines Chicago, a firm that conducts
studies of retail products to be introduced into the market.
In March 1997 Guidelines Chicago conducted an in-home use
test for applicant. Approximately 600 persons at shopping
malls in twelve major U.S. cities were provided with one or
more of applicant’s frozen dinner mixes that were referred
to by the name SKILLET SENSATIONS. The participants in the
in-home use test were told:
Opposition No. 111,517
16
The sponsor of this research is interested in
learning more of what you as a consumer think
of this new frozen meal and has arranged for us
to give you a free Lean Cuisine Skillet
Sensations product to use during the next
couple of days.
Following product usage, the participants were called by
telephone to obtain their reaction to the product.
We consider first the earliest date on which applicant
may rely for priority purposes. It is clear from the
testimony of applicant’s witnesses and the accompanying
exhibits that the first in-home use test of applicant’s
frozen dinner mix was conducted in January 1997. However,
because the consumers in this study were shown seven
possible names for the frozen dinner mix, there was not a
sufficient association of SKILLET SENSATIONS with applicant
to establish January 1997 as an actual date of first use of
SKILLET SENSATIONS. However, in the next in-home use test
conducted in March 1997, 600 consumers were given one or
more of the varieties of applicant’s frozen dinner mixes
which were referred to as SKILLET SENSATIONS. Further, the
record shows that applicant began selling its frozen dinner
mixes after this test. We find therefore that the earliest
applicant may claim rights in the trademark SKILLET
SENSATIONS is March 1997. See General Mills, Inc. v. Frito-
Lay, Inc., 176 USPQ 148 (TTAB 1972) [General Mills may claim
rights in the mark “ONYUMS” since February, 1969, when boxes
of the onion flavored snack featuring the mark “ONYUMS” were
Opposition No. 111,517
17
shipped to six cites throughout the United States and
distributed to the purchasing public in these cities along
with a display board featuring the “ONYUMS” trademark.
Notwithstanding that this distribution of the product was
for market testing purposes, it was a public use and display
of the mark and constitutes use of the mark in commerce as
defined in Section 45 of the Statue; and it was followed up
by a sale in May 1969 and national distribution in
September, 1969.] (footnote and citations omitted).
Considering next the earliest date on which opposer may
rely for priority purposes, we find that opposer is entitled
to rely on its franchisee Apple South’s use of SKILLET
SENSATIONS in block letters and stylized form for prepared
entrees in November 1996, when the first “Skillet
Sensations” promotional campaign was launched.
Although we have carefully reviewed opposer’s franchise
agreement and have not found a provision that covers the
specific situation in this case regarding a franchisee’s use
of a mark, we nonetheless find that the circumstances
surrounding the development of the “Skillet Sensations”
campaign and the relationship between opposer and Apple
South are of a nature such that Apple South’s use of SKILLET
SENSATIONS inures to opposer. In this regard, opposer’s
witness Mr. Webb testified that Apple South contacted
opposer prior to launching the Skillet Sensations campaign.
Opposition No. 111,517
18
Further, opposer’s witness Mr. Reeder testified that the
campaign was a collaborative effort between opposer and
Apple South. In addition, opposer’s witness Mr. Steinkamp
testified that all products sold by a franchisee of opposer
are done so under opposer’s trademarks.
Further, Apple South’s use of SKILLET SENSATIONS in
stylized form on table tents in its restaurants in November
1996 constitutes trademark use of the term in connection
with prepared entrees served in restaurants. In addition,
Apple South’s use of SKILLET SENSATIONS in block letters on
newspaper inserts and in television advertising during the
same month constitutes, at the very least, analogous
trademark use in connection with prepared entrees served in
restaurants. These uses were of such a nature and extent as
to create a public identification of the term with prepared
entrees served in restaurants. See T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996).
In view of the foregoing, we find that opposer may rely
on November 1996 as its priority date, when the first
“Skillet Sensations” promotional campaign was launched.
We consider next whether opposer has made continuous
use of the mark SKILLET SENSATIONS in block letters and
stylized form since November 1996, or has abandoned the mark
as applicant maintains. The record shows that in opposer’s
nationwide 1997 “Skillet Sensations” promotional campaign,
Opposition No. 111,517
19
SKILLET SENSATIONS was used in block and slightly stylized
letters on table tents, promotional menus, in-store posters,
and metal lids that covered the prepared entrees.
Similarly, opposer used SKILLET SENSATIONS in block and
slightly stylized letters in its 1998 and 1999 menus.
Opposer’s 2000 menu uses the heading “GRILLS & SKILLET
SENSATIONS” with a list of entrees, and its special 2001
menu contains “Skillet Sensations” within other text.
Opposer’s use of SKILLET SENSATIONS in block and
slightly stylized letters in its 1997, 1998 and 1999 menus
is clearly trademark use of the term. Moreover, opposer’s
continued use of the term, albeit with other wording in its
2000 and 2001 menus, evidences opposer’s intent not to
abandon the mark. We find therefore that opposer has made
continuous use of the mark SKILLET SENSATIONS.
We should note that even if Apple South had not made
analogous trademark use of SKILLET SENSATIONS in block
letters in November 1996, opposer would nonetheless be
permitted to tack Apple South’s trademark use of SKILLET
SENSATIONS in stylized form in November 1996 to opposer’s
subsequent trademark use of SKILLET SENSATIONS in block and
slightly stylized letters. There is no question that the
mark SKILLET SENSATIONS in stylized form is the legal
equivalent of the mark SKILLET SENSATIONS in block and
slightly stylized letters. See, e.g., Van Dyne-Crotty Inc.
Opposition No. 111,517
20
v. Wear-guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868
(Fed. Cir. 1991) and Jimlar Corp. v. Army & Air Force
Exchange Service, 24 USPQ2d 1216, 1221 (TTAB 1992).
Purchasers and potential buyers of opposer's prepared
entrees would plainly consider them to be the same mark
since, for all practical purposes, they are pronounced the
same way and project the same continuing commercial
impression.
Applicant’s remaining argument that opposer may not
claim rights in the mark SKILLET SENSATIONS because such
term is merely descriptive of opposer’s goods in that
opposer’s prepared entrees are served on a skillet is
without merit. We recognize that the word “skillet” has
descriptive significance in connection with opposer’s
prepared entrees served in restaurants, and indeed the word
“sensations” is somewhat suggestive of the quality of the
goods. However, applicant has not established that the
composite mark SKILLET SENSATIONS is merely descriptive of
opposer’s prepared entrees served in restaurants.
In sum, priority of use of SKILLET SENSATIONS rests
with opposer.
Opposition No. 111,517
21
Likelihood of Confusion
We turn next to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all the probative facts in evidence that are relevant to
the likelihood of confusion factors set forth in In re E.I.
duPont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). The facts deemed pertinent in this case are
discussed below.
Similarity of the Marks
The marks of the parties in typed/block form are
identical. In addition, applicant’s mark SKILLET SENSATIONS
is highly similar to opposer’s mark SKILLET SENSATIONS in
stylized form in that the marks would be pronounced the same
and create the same commercial impression.
Strength/Weakness of mark
Applicant argues that confusion is not likely because
opposer’s mark SKILLET SENSATIONS is a weak mark due to the
descriptive nature of the word “skillet” and the laudatory
nature of the word “sensations.” In support of its latter
contention, applicant submitted a number of third-party
registrations of marks that include the word SENSATIONS for
food and drinks. In addition, applicant submitted printouts
from the Internet of the home pages of restaurants and food
retailers that show use of such terms as “salad sensations,”
“sandwich sensations,” “savory sensations,” “tasty
Opposition No. 111,517
22
sensations,” and “healthy sensations” in connection with
menu items and retail food products. These third-party
registrations and uses of marks/designations that contain
the word “sensations” indicate that this word was chosen by
the trademark owners and businesses to suggest that their
products are spectacular or outstanding. However, this fact
does not help to distinguish the parties’ SKILLET SENSATIONS
marks. The word SENSATIONS, as used in both marks, conveys
the same suggestive significance, and the additional word
SKILLET is the same in both marks. Thus, notwithstanding
any alleged weakness in opposer’s mark, the fact remains
that the parties’ marks are identical and convey the same
commercial impression.
Relatedness of the Goods
Opposer’s goods are prepared entrees served in
restaurants and applicant’s goods are frozen dinner mixes.
The parties have spent a considerable amount of time during
trial and in their briefs debating the issue of the
relationship between these goods. Opposer argues that the
goods are closely related. Applicant, however, argues that
the goods are not related because there is a fundamental
difference in how the goods are sold-- opposer’s prepared
entrees are sold in a restaurant environment, whereas
applicant’s frozen dinner mixes are sold in grocery stores.
Opposition No. 111,517
23
In addition, applicant points out that there is no per se
rule that all food products are related.
We have carefully considered the parties’ arguments and
conclude that the respective goods are related. Applicant
is correct that there is no per se rule that all food
products are related. In this case, however, both parties’
goods are in the nature of meals or entrees, albeit one is
served in a restaurant and the other is purchased in a
grocery store. As noted in the identification of goods in
applicant’s application, its frozen dinner mixes contain
meat, vegetables, potatoes, rice and pasta and the record
shows that opposer’s prepared entrees contain beef, chicken,
and vegetables. Thus, there is considerable overlap in the
ingredients in the parties’ goods.
The goods in this case are relatively inexpensive.
Applicant’s frozen dinner mixes are priced under $5.00 and a
review of opposer’s menus shows that its prepared entrees
are in the range of $6.00 to $12.00. Further, the parties’
goods are purchased by the same class of purchasers, namely
average consumers who normally exercise no more than
ordinary care in their purchasing decisions. We note that
opposer’s witness, Mr. Steinkamp, testified that opposer has
sold some of its products in grocery stores. Also, the
record shows that several other restaurants sell some of
their products in grocery stores. This evidence
Opposition No. 111,517
24
demonstrates that consumers have been exposed to restaurants
selling their products in grocery stores.
In view of the foregoing, we find that opposer’s
prepared entrees served in restaurants and applicant’s
frozen dinner mixes are related goods.
Expert Testimony
Applicant took the testimony of an expert witness,
William O’Connor, who has worked in the field of brand
development and marketing for over thirty years. Mr.
O’Connor testified that, in his opinion, there is no
likelihood of confusion in this case. We have given little
weight to the testimony of Mr. O’Connor in our likelihood of
confusion analysis because of several reasons. His opinion
was based in large part on the fact that consumers would not
confuse the involved goods, i.e., prepared entrees served in
restaurants and frozen dinner mixes purchased in a grocery
store. However, the issue to be determined under Section
2(d) of the Trademark Act, in such cases as this, is not
whether the goods in question are likely to be confused, but
rather whether there is a likelihood that purchasers or
potential purchasers thereof will be misled into the
mistaken belief that they emanate from the same source. It
is for this reason that goods need not be identical or
competitive in nature in order to support a finding of
likelihood of confusion.
Opposition No. 111,517
25
Further, Mr. O’Connor acknowledged on cross-examination
that he was not familiar with the duPont likelihood of
confusion factors. Finally, it is well settled that the
opinions of witnesses, even by persons considered to be
experts in a particular field on questions before the Board,
are not binding upon the Board. See The Quaker Oats Company
v. St. Joe Processing Company, Inc., 232 F.2d 653, 109 USPQ
390 (CCPA 1956).
Actual confusion
Applicant has pointed to both of the parties being
unaware of any instances of actual confusion despite at
least three years of concurrent use of the marks. The issue
before us, however, is not one of actual confusion, but only
the likelihood of confusion. As has often been stated,
evidence of actual confusion is hard to obtain. Moreover,
neither party indicated that it had a system in place for
reporting instances of actual confusion if such were to
occur.
In view of the foregoing, we conclude that purchasers
and prospective purchasers familiar with opposer’s SKILLET
SENSATIONS prepared entrees served in opposer’s restaurants
are likely to believe, upon encountering applicant’s SKILLET
SENSATIONS frozen dinner mixes, that the goods originate or
are associated with the same source.
Opposition No. 111,517
26
Other arguments
Several other arguments require comment although they
did not affect our decision herein.
Applicant’s argument that confusion is not likely
because consumers will associate applicant’s SKILLET
SENSATIONS mark with applicant’s house mark “Stouffer’s” and
opposer’s SKILLET SENSATIONS mark with opposer’s house mark
“Applebee’s” is not well taken. The Board must compare
applicant’s mark as depicted in the drawing in the involved
application with opposer’s mark as actually used. In this
case, “Stouffer’s” does not appear in the drawing of
applicant’s mark and opposer’s mark is not a composite mark
that consists of “Applebee’s” and SKILLET SENSATIONS.
As indicated in the notice of opposition, opposer is
the owner of application Serial No. 75/308,648 for the mark
SKILLET SENSATIONS in stylized form for prepared entrees
served in restaurants. The Examining Attorney assigned to
opposer’s application issued an Office action citing
applicant’s earlier-filed involved application as a
potential bar to registration. Opposer responded to this
Office action and argued that there was no likelihood of
confusion between the marks. Applicant contends that
opposer is estopped from now maintaining that there is a
likelihood of confusion between the parties’ marks. It is
clear that while opposer’s earlier position may be
Opposition No. 111,517
27
considered as evidence, no equitable estoppel results there
from. See Interstate Brands Corp. v. Celestial Seasonings,
Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978).
Lastly, applicant has argued that its SKILLET
SENSATIONS mark has become distinctive of its goods as a
result of extensive sales and advertising. Inasmuch as mere
descriptiveness is not a ground for opposition, the question
of whether applicant’s mark has become distinctive of its
goods is not an issue in this proceeding.
In sum, in view of the identity of the marks, the
relatedness of the goods, and the identity of the
purchasers, we find that confusion is likely in this case.
Decision: The opposition is sustained.