ConAgra Foods RDM, Inc.v.Candwich Food Corporation

Trademark Trial and Appeal Board

Jul 17, 2008

No. 91170341 (T.T.A.B. Jul. 17, 2008)

Mailed:
July 17, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

ConAgra Foods RDM, Inc. f/k/a ConAgra Brands, Inc.
v.
Candwich Food Corporation
________

Opposition No. 91170341
against Serial No. 78337608
_______

Christopher M. Bikus, Michaela A. Smith, Patrick C.
Stephenson and Tracy Deutmeyer of McGrath North Mullin &
Kratz, PC LLO for ConAgra Foods RDM, Inc.

Julie K. Morriss of Morriss O’Bryant Compagni, P.C. for
Candwich Food Corporation
_______

Before Quinn, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Candwich Food Corporation seeks registration on the
Principal Register of the mark CANDWICH (in standard
character format) for goods identified in the application, as
amended, as follows:
“food items packaged in cans, namely,
vegetable-based snack foods” in International
Class 29; and
“food items packaged in cans, namely meat-
based sandwiches, candy, popcorn, candy
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170341
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popcorn and dessert puddings” in
International Class 30. 1
ConAgra Brands, Inc. (by merger, now known as ConAgra
Foods RDM, Inc.) has opposed this application on the ground
of priority of use and likelihood of confusion, alleging
that applicant’s mark, when used in connection with the
identified goods, so resembles its MANWICH mark, which is
the subject of two registrations, as follows:
MANWICH for “sandwich sauce” in International Class 30;2
and
MANWICH for “spice and seasoning mixes for meats” also in
International Class 30.3

as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d). As a second ground for opposition, opposer
alleges that applicant’s CANDWICH mark should be refused
registration because allowing such registration would result

1 Application Serial No. 78337608 was filed on December 8,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

2 Registration No. 0888780 issued to Hunt-Wesson Foods, Inc.
on March 31, 1970; second renewal. According to the records of
the Assignment Services Division of the United States Patent and
Trademark Office, this registration was assigned to Conagra Foods
RDM, Inc. during May 2007, recorded at Reel 3579, Frame 0821.

3 Registration No. 1349839 issued to Hunt-Wesson Foods, Inc.
on July 16, 1985; renewed. According to the records of the
Assignment Services Division of the United States Patent and
Trademark Office, this registration was assigned to Conagra Foods
RDM, Inc., during May 2007, recorded at Reel 3579, Frame 0821.

Opposition No. 91170341
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in dilution of the distinctive quality of opposer’s
MANWICH mark in violation of Section 43(c) of the Lanham
Act, 15 U.S.C. § 1125(c).
Applicant, in its answer, denied all the salient
allegations of these claims.
I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the file of the
involved application.
The record also includes the following testimony and
evidence:
A. Opposer’s Evidence

1. Testimony Deposition of Joseph Anthony Bybel, Vice
President of Marketing for a portfolio of brands,
including MANWICH, taken on August 6, 2007 (with
Exhibit Nos. 1-4) (“Bybel Dep.”);
2. Opposer’s First Notice of Reliance filed on August
27, 2007 on ConAgra’s pleaded Registration No.
0888780;
3. Opposer’s Second Notice of Reliance filed on
August 27, 2007 on ConAgra’s pleaded Registration
No. 1349839.
Opposition No. 91170341
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4. Opposer’s Third Notice of Reliance filed on August
27, 2007 on the discovery deposition of Mark R.
Kirkland taken on February 27, 2007 (“Kirkland
Dep.”).
5. Opposer’s Fourth Notice of Reliance filed on
August 27, 2007 on printed publications; and
6. Opposer’s Fifth Notice of Reliance filed on August
27, 2007 on third party Registration Nos. 2899796;
2928755; 2156879; 1222755; and 3229262.
B. Applicant’s Evidence:
1. Applicant’s First Notice of Reliance filed on
October 24, 2007 on printed publications;
2. Applicant’s Second Notice of Reliance filed on
October 24, 2007 on the discovery deposition of
Mark R. Kirkland (with Exhibit Nos. 1-6); and
3. Applicant’s Third Notice of Reliance filed on
October 24, 2007 on certain additional portions of
the discovery deposition of Mark R. Kirkland
earlier relied upon by opposer.
II. FACTUAL FINDINGS
The record establishes all of the following facts in
this case.
According to the testimony of Mr. Bybel, opposer began
sales of sloppy Joe sandwich sauce under the MANWICH mark
Opposition No. 91170341
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in 1969 (through its predecessor in interest). Hence, the
MANWICH mark has been in continuous use on these sauces
for almost forty years. As seen above, opposer owns two
incontestable registrations for the MANWICH trademark.
Annual sales in 2007 reached approximately $75 million,
making the MANWICH brand one of the largest selling sloppy
Joe sandwich sauces in the country. Opposer expends
$10 million annually on promoting its MANWICH branded
products nation-wide. This effort includes television
advertising, free-standing inserts and coupons in local
newspapers, advertisements in retailers’ circulars and over
the Internet, as well as movie tie-ins that include joint
promotions with DVD’s such as “Shrek.”
A typical can of MANWICH sauce costs approximately
$1.50 and the primary customer of the MANWICH brand sauce
is the individual responsible for purchasing household
groceries. Opposer has also marketed under the MANWICH
brand a ready-to-eat, refrigerated product having fully-
cooked ground beef.
Applicant seeks to register the mark CANDWICH for use
with shelf-stable, ready-to-eat, sandwiches that are
contained within vending-sized cans. While the
identification of goods lists meat-based sandwiches, the
sample labels in the record were for peanut butter and jelly
Opposition No. 91170341
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sandwiches. Other types of sandwiches under development
include barbecue chicken, barbecue beef, pizza, French toast
and bacon & cheddar. Applicant also contemplates that the
vendable-sized cans will contain vegetable-based snacks such
as potato chips and crackers, as well as dessert puddings,
etc. In addition to being sold through vending machines,
applicant’s canned products will likely be sold in retail
stores. The ultimate consumers are projected to be
primarily persons looking for a convenient, on-the-go food
having a long shelf life and no need for refrigeration.
III. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has submitted evidence of its ownership of
Opposition No. 91170341
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its MANWICH registrations. We consider this evidence as
sufficient to establish opposer’s interest and, therefore,
standing, in this proceeding.
B. Priority
Because opposer has established that it owns valid and
subsisting registrations of its pleaded mark, priority is
not an issue. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995).
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
Opposition No. 91170341
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the marks.” See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
Fame
As to the strength of opposer’s involved mark, the
record shows that opposer’s MANWICH mark is truly well-
known. Opposer has enjoyed almost forty years of continuous
usage of the MANWICH mark for sloppy Joe sauce. It
expends approximately $10 million annually in promotional
costs, and during fiscal year 2007, opposer exceeded $75
million in annual sales. There is no evidence in the record
of any third-party use of similar marks for related goods.
Accordingly, we find that the MANWICH mark is strong and
entitled to a broad scope of protection.
More significantly, for our purposes, the du Pont
factor focusing on the fame of the prior mark plays a
dominant role in the process of balancing the du Pont
factors in cases featuring a strong mark. Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992); see also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Opposition No. 91170341
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Cir. 2002); and Recot, Inc. v. M. C. Becton, 214 F.3d 1322,
54 USPQ2d 1894 (Fed. Cir. 2000). As the fame of a mark
increases, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines. Bose Corp., 63 USPQ2d at 1309.
Moreover, the Federal Circuit has stated repeatedly
that there is no excuse for even approaching the well-known
trademark of a competitor. See Nina Ricci S.A.R.L. v. E.TF.
Enterprises, 889 F.2d 1070, 1074, 12 USPQ 1901, 1904 (Fed.
Cir. 1989), inasmuch as “[a] strong mark … casts a long
shadow which competitors must avoid”; and Kenner Parker Toys
Inc., 22 USPQ2d at 1456.
We agree with opposer that this evidence confirms that
the MANWICH mark is famous. The evidence in this case
certainly exceeds the extensive public recognition and
renown found sufficient to establish fame in other cases.4

4 See Bose Corp., 63 USPO2d at 1308 [ACOUSTIC WAVE mark famous
based on seventeen years of use, annual sales over $50 million,
annual advertising in excess of $5 million, and extensive media
coverage]; Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 12
USPQ2d at 1902 [NINA RICCI famous for perfume, clothing and
accessories based on $200 million in sales, over $37 million in
advertising, and over 27 years of use]; Kimberly-Clark Corp. v.
H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed.
Cir. 1985) [HUGGIES famous for diapers based on over $300 million
in sales over nine years and $15 million in advertising in a
single year]; Specialty Brands Inc. v. Coffee Bean Distribs.,
Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) [SPICE
ISLANDS for teas, spices and seasonings famous based on use for 40
years, $25 million annual sales for spices, $12 million sales for
tea between 1959 and 1981, and “several million” in advertising].

Opposition No. 91170341
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There is no implication in this record that applicant
chose its mark to trade on the goodwill developed by
opposer, but applicant’s president, Mark R. Kirkland,
admitted that he had known of the MANWICH brand for many
years prior to the filing date of this application.
In view of the above, we find that the du Pont factor
focusing on the fame of the mark weighs in favor of finding
a likelihood of confusion herein.
Relatedness of the goods
We turn, next, to the relatedness of the goods as
listed in the cited registrations and in the involved
application. It is well-established that goods need not be
identical or even competitive in order to support a
determination of likelihood of confusion. Rather, it is
enough that goods are related in some manner such that their
marketing would be likely to be seen by the same persons
which give rise to a mistaken belief that the goods are
associated. In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). Furthermore, the
Board must base its determination of whether there is a
relationship between the goods of the parties on the basis
of the goods as identified in the respective application and
registrations. Octocom Systems, Inc. v. Houston Computer
Opposition No. 91170341
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Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Cir. 1990).
Applicant has characterized its intended products as
vendable food items such as sandwiches, snacks such as chips
and desserts such as puddings, all of which would be
“packaged in cans.”
Registrant’s ’780 Registration covers “sandwich sauce.”
As shown in the record, this is a tomato-based sauce for
making sloppy Joe sandwiches when mixed with ground beef.
Applicant’s identification of goods specifically
enumerates “meat-based sandwiches.” A sample label shows
CANDWICH used in connection with a barbeque chicken
sandwich. Applicant’s president testified about his
interest in pursuing barbeque beef and barbeque chicken
sandwich pockets. In fact, applicant’s president mused
during his trial testimony that he thought to himself, as he
was driving to the deposition, that it might be mutually
beneficial to co-brand with opposer, creating the CANDWICH
brand beef sandwich pocket using MANWICH brand sauce.
Moreover, the existence of the following third-party
registrations for sandwich sauces as well as sandwiches and
vendable snacks, all offered under the same mark, further
supports the conclusion that the goods described in the
CANDWICH application fall within the natural zone of
Opposition No. 91170341
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expansion for goods described in the MANWICH
registrations:
STOUFFER’S for “prepared, preserved foods-namely, meats; fish;
shellfish; poultry; vegetables; fruits; [and] soufflés”
in International Class 29;
“prepared, preserved foods-namely, pizza; crepes;
sandwiches; [and] sauces” in International Class 30;5
TRADER
JOE’S
for, inter alia, “ … barbecue sauce, … candy coated
popcorn, … caramel popcorn, … cereal-based snack food,
… cheese flavored puffed corn snacks, … corn chips,
corn curls, … cracker and cheese combinations,
crackers, … flour-based chips, … grain-based chips, …
pizza sauce, popped popcorn, … pretzels, … processed
popcorn, puddings, puffed corn snacks, … rice-based
snack foods, … sandwiches, sauces, … snack mix
consisting primarily of crackers and/or pretzels and/or
candied nuts and/or popped popcorn, … taco chips, …
tortilla chips, … and wheat-based snack foods” in
International Class 30;6
A TASTE OF
INDONESIA
for, inter alia, “processed foods, namely, … banana
chips; … beef jerky; processed blueberries; banana
chips; … cassava chips; … yucca chips; … cheese and
cracker combinations; … shelf stable meat, fish,
poultry or vegetables; … fruit-based snack food; …
jams; jellies; … marmalade; … food package combinations
consisting primarily of cheese, meat, seafood,
vegetable and/or processed fruit; … peanut butter; pork
rinds; … potato chips; potato crisps; … snack mix
consisting primarily of processed fruits; processed
nuts and/or raisins; … cheese spreads; meat-based
spreads; … tomato paste; tomato puree; canned, cooked
and otherwise processed tomatoes; vegetable-based
spreads; processed, fresh, and canned vegetables; …” in
International Class 29;
“food products and ingredients of foods, namely, …
barbecue sauce; … candied popped popcorn; … candy
coated popcorn; … caramel popcorn; caramels; … cereal
based snack food; cereal-based energy snack food bars;
… cheese flavored puffed corn snacks; … corn chips;
corn curls; … cracker and cheese combinations;
crackers; … flour-based chips; … glazed popcorn; …
grain-based chips; … granola-based snack bars; …

5 Registration No. 1222755 issued on January 4, 1983; renewed.

6 Registration No. 2156879 issued on May 12, 1998; renewed.

Opposition No. 91170341
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hamburger sandwiches; … popped popcorn; … pretzels; …
processed popcorn; … puddings; puffed corn snacks; …
rice-based snack foods; … granola-based snack bars;
sloppy Joe sauce; sloppy Joe seasoning mix; … tomato
sauce; … tortilla chips; … wheat-based snack foods; …:
in Intl. Class 30;7
PLANET
COOK
for, inter alia, “ … fruit and soy based snack food,
fruit chips, … fruit-based snack food, … jams, jellies,
… marmalade, … processed nuts, … peanut butter, …
potato chips, … potato-based snack foods, … cheese or
chicken sandwich spread, … snack mix consisting
primarily of processed fruits, processed nuts and/or
raisins; … soy-based snack foods, … vegetable-based
spreads, …” in Intl. Class 29;
“… bakery goods, barbecue sauce, … candy coated
popcorn, … caramel popcorn, … cereal based snack food,
cheese flavoured puffed corn snacks, … corn chips, …
cracker and cheese combinations, crackers, … food
package combination consisting primarily of bread,
crackers and or cookies, … granola-based snack bars, …
microwave popcorn, … popped popcorn, … puddings, …
ready-to-eat cereal derived food bars, … sandwiches,
sauces, … tomato sauce, … tortilla chips, tortilla
shells, …” in International Class 30;8
JIMANO'S for “barbecue dry rub; barbecue sauce; … pizza sauce;
ravioli; sandwiches; sauces for barbecued meat; …
spaghetti sauce; frozen, prepared, packaged meals
consisting primarily of pasta or rice” in International
Class 30.9

Channels of Trade
Under applicant’s business model, the unique feature of
packaging these goods is putting combinations of sandwich
pockets, chips and/or a dessert pudding in vendable cans.
Hence, the founder and president of applicant envisions that
many of these goods will eventually be marketed through

7 Registration No. 2899796 issued on November 2, 2004.

8 Registration No. 2928755 issued on March 1, 2005.

9 Registration No. 3229262 issued on April 17, 2007.
Opposition No. 91170341
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vending machines. However, applicant’s president also
testified that he thought retail operations, including big-
box, discount stores, would be key components of the initial
marketing strategy. This latter effort would involve a
trade channel that overlaps with opposer’s traditional
retail channels of trade. Even in the absence of such
testimony, any asserted limitation in the actual trade
channels of applicant cannot be considered. In re Bercut-
Vandenvoort & Co., 229 USPQ 763, 764-65 (TTAB 1986)
[extrinsic evidence and argument suggesting trade-channel
restrictions not specified in application rejected].
Neither the involved application nor the registrations at
issue include any restrictions as to the channels of trade.
Therefore, it must be assumed that the goods as they are
identified in the application for registration would travel
in all appropriate trade channels to all potential
purchasers of such goods. See Cunningham v. Laser Golf
Corp. 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Conditions under which sales are made, and to whom
Similarly, the evidence in the record reveals that the
intended purchaser of applicant’s CANDWICH product will be
“anyone that intends to purchase a food item,” and more
specifically, the individual responsible for purchasing
household groceries. See opposer’s Third Notice of
Opposition No. 91170341
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Reliance, Kirkland Dep. at 22-23, 41; applicant’s Second
Notice of Reliance, Kirkland Dep. at 41-42. This is the
same consumer to whom opposer targets its products.
Moreover, both the involved products are inexpensive –
ranging between one and two dollars apiece – clearly
qualifying them as “impulse items.” When goods are
purchased on impulse and without a great deal of care,
consumers pay limited attention to the purchase of such
goods and are thus more susceptible to confusion. “It has
often been stated that purchasers of such products are held
to a lesser standard of purchasing care and thus, are more
likely to be confused as to the source of the goods.” Wet
Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB
2007) [sustaining the opposition on the grounds of
likelihood of confusion, in part, because the parties' goods
were susceptible to impulse purchase and frequent
replacement; also citing to Specialty Brands, Inc. v. Coffee
Bean Distribs., Inc. 748 F.2d 669, 223 USPQ2d 1281 (Fed.
Cir. 1984)].
The Marks
We turn next to examine the similarity or dissimilarity
of the parties’ marks in their entireties as to appearance,
sound, connotation and commercial impression. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Opposition No. 91170341
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1772, 73 USPQ2d at 1692. In particular, opposer argues that
the parties’ marks are confusingly similar as to sight,
sound and meaning.
Under this du Pont factor, the test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
such that confusion as to the source of the goods offered
under the respective marks is a likely result. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Comparing the marks, we agree with opposer that the
linguistic component of applicant’s mark and opposer’s mark
are similar in appearance and substantially identical in
pronunciation. Both terms contain the same number of
syllables and have the same stress pattern, with the primary
accent on the initial syllable and the second syllable of
each being identical. As to appearance and sound, the most
noticeable difference between the marks is the fact that
applicant’s mark starts with the letter “C” while opposer’s
mark begins with the letter “M.” In this context, slight
differences in the sound of similar marks do not avoid a
likelihood of confusion. G.D. Searle & Co. v. Chas. Pfizer
& Co., 265 F.2d 385, 387, 121 USPQ 74 (7th Cir. 1959)
[finding BONAMINE and DRAMAMINE confusingly similar
Opposition No. 91170341
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despite differences in the prefixes of both words]; see also
Interlego AG V. Abrams/Gentile Entertainment Inc., 63 USPQ2d
1862 (TTAB 2002) [finding MEGO confusingly similar to
LEGO); American Cyanamid Co. v. U.S. Rubber Co., 356 F.2d
1008, 148 USPQ 729 (CCPA 1966) [given the similarity in
sound and spelling, PHYGON confusingly similar to CYGON).
Certainly, no trademark owner can guarantee that the
public will pronounce its mark perfectly. Frances Denney,
Inc. v. ViVe Parfums Ltd., 190 USPQ 302 (TTAB 1976) [ViVe and
fleur de lis design for perfume products are likely to cause
confusion with VIVA cosmetic products]; Nina Ricci S.A.R.L.
v. Haymaker Sports, Inc., 134 USPQ 26 (TTAB 1962)
[applicant’s RICCI OF HAYMAKER is confusingly similar to
opposer’s NINA RICCI and RICCI]; In re Electrons, Inc.,
144 USPQ 442 (TTAB 1964) [applicant’s Di-El-Trol is confusingly
similar to registrant’s DIALTRON]; In re Energy
Telecommunications & Electrical Association,
222 USPQ 350 (TTAB 1983) [INTELECT likely to be
confused with the ENTELEC design shown at right:
In fact, applicant’s president acknowledged that CANDWICH
and MANWICH sound alike. (Opposer’s Third Notice of
Reliance, Kirkland Dep. at 39).
On the other hand, we do not find a strong similarity
in connotation. To the extent the common suffix –WICH may
Opposition No. 91170341
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convey a relationship with sandwiches, prospective consumers
may be inclined to look to the first syllable for
distinguishing matter. In this context, opposer’s mark may
suggest a sandwich suitable for a “man,” while applicant’s
proposed mark suggests a sandwich in a “can.”
Hence, while the beginning consonants have a different
appearance, these words sound very much alike when spoken.
We find that this similarity in sound and appearance
outweighs the dissimilarity in connotation.
While we cannot be sure what commercial impressions
these respective marks will create, given the relatedness of
the goods, we find it possible that consumers acquainted
with opposer’s MANWICH sauces, upon first encountering
applicant’s CANDWICH barbeque beef sandwich pockets, for
example, may find the respective commercial impressions
similar enough to assume that this may well be a logical
brand extension by opposer.
We note that the record does not reveal the frequency
with which manufacturers and merchants choose -WICH
formative marks in connection with sandwich-related
products. However, we should hasten to note that in finding
these two marks in their entireties to be confusingly
similar, we are clearly not finding that any one party could
create for itself proprietary rights in the –WICH suffix in
Opposition No. 91170341
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connection with the manufacturing and/or merchandising of
sandwiches.
Resolving any Doubt against applicant
Further, all doubt with respect to whether confusion,
mistake or deception is likely must be resolved against the
applicant. Uncle Ben's, Inc. v. Stubenberg, Int'l, Inc.,
47 USPQ 1310 (TTAB 1998) [finding a likelihood of confusion
between UNCLE BEN’S and BEN’S BREAD].
In this case, it is clear that applicant adopted its
mark knowing full well of opposer’s well-known MANWICH
mark. (Opposer's Third Notice of Reliance, Kirkland Dep. at
35). Applicant acknowledged that the goods offered under
its mark could be used in conjunction with the goods offered
under the MANWICH mark. (Opposer's Third Notice of
Reliance, Kirkland Dep. at 38). “It is a well established
principle that one who adopts a mark similar to the mark of
another for the same or closely related goods or services
does so at his own peril, and any doubt as to likelihood of
confusion must be resolved against the newcomer and in favor
of the prior registrant.” Starbucks U.S. Brands, LLC v.
Ruben, 78 USPQ2d 1741 (TTAB 2006). In this case, we find
that applicant’s mark is simply too similar to opposer’s
mark and as such, any doubt which may exist, must be
resolved against applicant.
Opposition No. 91170341
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D. Dilution
Finally, we note that opposer also charges that given
the demonstrated prior fame of opposer’s MANWICH mark,
applicant’s use of its CANDWICH mark is likely to cause
dilution of opposer’s mark under the Federal Trademark
Dilution Act of 1995. However, given our determination that
opposer has priority of use and that there is a likelihood
of confusion herein, we find it unnecessary to reach a
determination on the question of dilution in this
proceeding.
Decision: The opposition is sustained based on the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.