Emmpak Foods, Inc.

Trademark Trial and Appeal Board

Sep 28, 2001

No. 75746873 (T.T.A.B. Sep. 28, 2001)

9/28/01

Paper No.
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Emmpak Foods, Inc.
________
Serial No. 75/746,428
Serial No. 75/746,610
Serial No. 75/746,810
Serial No. 75/746,827
Serial No. 75/746,873
Serial No. 75/746,886
_______

Jan Scott Pierce of Weiss, Berzowski, Brady & Donahue LLP for
Emmpak Foods, Inc.

Tanya L. Amos, Trademark Examining Attorney, Law Office 101
(Jerry L. Price, Managing Attorney).
_______

Before Simms, Bottorff and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Emmpak Foods, Inc. has filed applications to register the
marks shown below for "processed meats."

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
2
Serial No. 75/746,610;1

Serial No. 75/746,827;2 the word "CLASSIC" has been disclaimed;

EMMBER CLASSIC

Serial No. 75/746,873;3 the words "FOODS INC." have been
disclaimed;

and Serial No. 75/746,886;4 the word "FOODS" has been disclaimed.

EMMBER FOODS

Applicant has also filed applications to register the marks
shown below for "fully cooked protein entrees."

1 Filed July 9, 1999; alleging dates of first use on September 1, 1998.
2 Filed July 7, 1999; alleging dates of first use on July 1, 1996.
3 Filed July 7, 1999; alleging dates of first use on August 3, 1998.
4 Filed July 7, 1999; alleging dates of first use on August 3, 1998.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
3
Serial No. 75/746,810;5 the words HEAT AND SERVE have been
disclaimed;

and Serial No. 75/746,428;6 the words HEAT AND SERVE have been
disclaimed.

In each application, applicant has claimed ownership of
Registration No. 1,146,249 for the mark shown below (EMMBER
BRANDS and design) for "beef products-namely, processed and
frozen beef products to be sold to restaurants, distributors and
institutions." The registration includes a disclaimer of
"BRANDS."7

5 Filed July 9, 1999; alleging dates of first use on September 1, 1998.
6 Filed July 9, 1999; alleging dates of first use on September 1, 1998.
7 Issued January 20, 1981; combined affidavit under Sections 8 and 15
accepted and acknowledged, respectively.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
4
The Trademark Examining Attorney refused registration under
Section 2(d) of the Trademark Act in each application on the
ground that applicant's mark so resembles the mark in
Registration No. 966,558, shown below for "precooked browned pork
sausage patties and links sold to restaurant chains, institutions
and wholesalers"8 as to be likely to cause confusion.9

When the refusal in each case was made final, applicant
appealed. Briefs have been filed. An oral hearing was not
requested. Because the issues in these six applications are
substantially the same, the appeals have been consolidated and
are being treated in a single decision.
In any likelihood of confusion analysis, we look to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476

8 Issued October 2, 1990; combined Sections 8 and 15 accepted and
acknowledged, respectively. The registration indicates that the
drawing is lined to represent the color red.

9 Registration was initially also refused in view of Registration No.
749,962 for the mark EMBER-SMOKED (in stylized form) for bacon (the
bracketed goods in the registration, i.e., "smoked ham, and smoked and
fully cooked hams, sold as whole hams or half hams" are considered
deleted from the registration). That refusal was subsequently
withdrawn.

Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
5
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services.
Turning first to the goods, registrant's "precooked browned
pork sausage patties and links" are fully encompassed by
applicant's broadly described "processed meats." Thus, the
respective goods must be considered legally identical, directly
competitive products. Moreover, applicant's "protein entrees,"
which would include entrees consisting of meat, would also
encompass registrant's precooked sausage patties and links. In
view of the directly competitive and otherwise closely related
nature of the respective goods, and the absence of any
restrictions in the involved application, applicant's goods must
be deemed to travel in the same channels of trade and to be
purchased by the same customers as those of registrant.
Applicant admits that the goods are closely related (see,
e.g., applicant's reply brief, p. 8 in application Serial No.
75/746,810) but maintains that the differences in the marks, the
sophistication of the purchasers, and the absence of actual
confusion, likelihood of confusion does not exist.
As to the purchasers, applicant argues that the restriction
in registrant's identification of goods to restaurant chains,
institutions and wholesalers means that there is "only one common
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
6
channel of trade" and that the only common purchasers are highly
sophisticated.
The Examining Attorney maintains, however, that applicant
has provided no evidence that restaurant chains, institutions and
wholesalers "contain sophisticated consumers of expensive goods"
or that processed meats are expensive or "complicated" goods.
The Examining Attorney contends that these products are found "in
wholesale club stores along with other uncomplicated and
inexpensive goods," that the identified purchasers include small
"mom and pop" entities that would not necessarily be purchasing
large or expensive quantities of the goods on a regular basis,
and that, in any event, even sophisticated purchasers are not
immune from source confusion.
It is clear that the only overlapping customers for the
respective products are restaurants, institutions and
wholesalers. It is reasonable to assume that these purchasers
are more sophisticated than ordinary consumers. While such
purchasers might include "mom and pop" operations, there is no
indication that such customers would be less sophisticated in
their purchasing decisions than other commercial buyers and, in
any event, there is no evidence that such purchasers are the
typical customers for registrant's goods. Moreover, there is
nothing in the record to indicate that the purchase of these
products in commercial quantities would be inexpensive.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
7
Nevertheless, as the Examining Attorney points out, even
sophisticated purchasers are not necessarily immune from source
confusion. This case is distinguishable from Electronic Design &
Sales, Inc., v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992) where the respective purchasers were
deemed to be "substantially different" (supra at 1393) and where
the parties' respective goods and services on which the marks
were used were deemed to be "different" (supra at 1393). In the
present case we have identical purchasers buying directly
competitive products. Under these circumstances, and where the
marks are similar, it has generally been held that purchaser
sophistication would not serve to preclude the likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); Towers v. Advent
Software Inc., 17 USPQ2d 1471 (TTAB 1989) aff'd, 913 F.2d 942, 16
USPQ2d 1039 (Fed. Cir. 1990); Formica Corporation v. Saturn
Plastics & Engineering Co., 185 USPQ 251 (TTAB 1975); General
Electric Company v. Raychem Corporation, 184 USPQ 766 (TTAB
1974); and In re Elco Corporation, 180 USPQ 155 (TTAB 1973). The
mere fact that one is knowledgeable in a particular field does
not mean that the individual is also skilled in distinguishing
between two similar trademarks in the field. See Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
8
Thus we turn our attention to the marks, keeping in mind
that when marks would appear on identical or closely related
goods, the degree of similarity between the marks necessary to
support a finding of likelihood of confusion declines. Century
21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
It is the Examining Attorney's position that each of
applicant's marks is similar to registrant's mark in terms of
sound, meaning and commercial impression. The Examining Attorney
argues that the word EMBER in the cited mark is the phonetic
equivalent of EMMBER in each of applicant's marks and that those
terms are the dominant words in the respective marks.10 The
Examining Attorney has included a dictionary definition of "farm"
and argues based thereon that the word FARM and the design of the
farm in registrant's mark are suggestive of the origin of
registrant's goods. The Examining Attorney maintains that there

10 However, the Examining Attorney's statement that applicant "may add
a design feature to its mark in a similar manner to that of the
registrant" is incorrect. A typed drawing allows protection for all
reasonable manners of presentation. See Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) and INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992). This is so
because rights in the typed word reside in the word itself not in any
particular display of the term. Thus, rights in the term would not be
extended to include protection for that word combined with, for
example, other words or a design element. See Fossil Inc. v. Fossil
Group, 49 USPQ2d 1451 (TTAB 1998) and In re Pollio Dairy Products
Corp., Inc., 8 USPQ2d 2012 (TTAB 1988). Consequently, it would not be
reasonable to assume that applicant's mark would be presented with the
design element appearing in registrant's mark.

Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
9
is no evidence to indicate that EMBER is weak and entitled to a
narrow scope of protection.
Applicant, on the other hand, contends that the Examining
Attorney has improperly dissected the marks, and that when
considered in their entireties, the differences in "content,
design and spelling" distinguish the marks. Applicant argues
that the marks create different commercial impressions; that
EMMBER FARMS suggests "an equestrian breeding operation," but
that applicant's mark "creates a totally different impression."
Applicant maintains that its mark is distinguished by the
spelling of EMMBER, the inclusion of additional wording and/or
bold design features in the marks, or the absence of a design as
contrasted with "the design-rich EMBER FARMS mark...."
Continuing, applicant contends that the words EMBER and EMMBER
are not the dominant portions of the marks essentially because
the term EMBER in registrant's mark is a common word, frequently
registered in the same or related fields. Applicant concludes
that EMBER is weak and highly suggestive and that, therefore,
when the marks are considered in their entireties, "even minor
differences in the mark[s] will negate any confusion caused by

Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
10
the common word."11 Applicant also argues that variations of
EMBER have been registered for meat products not only in the
registration for EMBER FARMS and design but the earlier-cited
registration EMBER-SMOKED for bacon.12 (See footnote 8, supra).
While marks must be compared in their entireties, there is
nothing improper in giving more weight to certain features of the
marks as being more dominant or otherwise significant. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.

11 Applicant, for the first time in its brief, referred to a list of
third-party registrations for EMBER and variations thereof in support
of its claim that registrant's mark is weak. The Examining Attorney
objected to this evidence on grounds that the evidence is untimely and
because, in any event, mere lists of registrations are not sufficient
to make them of record. Applicant then filed a request for remand to
allow the electronic copies of the registrations to be introduced. The
Board ruled on this request in three of the involved applications,
denying the remand request on the ground that the evidence is untimely.
The request for remand is now also denied as untimely in applications
Serial Nos. 75/746,873, 75/746,428, and 75/746,827 for the reasons set
forth in the Board's prior orders. Therefore, none of this evidence
will be considered in our decision herein and any argument based on the
existence of these registrations will be given no consideration. Even
if the third-party registrations were properly of record, they would
not be persuasive since, aside from the cited, owned or cancelled
registrations also included with applicant's submission, none of the
registrations is for the same goods as those herein. In any event,
third-party registrations are not evidence that the marks therein are
in use or that purchasers are aware of them.

12 Applicant relies on statements made by registrant during prosecution
of its underlying application to support applicant's position that the
design is the dominant portion of registrant's mark. These statements
were made in response to the Examining Attorney's refusal to register
the EMBER FARMS mark based on the existence of the then-registered mark
"EMBERDALE." Applicant has also pointed to the specimens of use in the
registration file for EMBER FARMS to show that the registered mark, as
actually used, is not similar to applicant's marks. First, the
likelihood of confusion is based on the mark set forth in the
registration, not as allegedly used by registrant, and further,
statements made by registrant to overcome a refusal based on an
entirely different mark have no bearing on this case.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
11
1985). When the marks in this case are considered as a whole,
giving appropriate weight to the features thereof, we find that
each of applicant's marks is similar in sound, and in overall
meaning and commercial impression, to registrant's mark.
The dominant portion of the marks is the wording EMBER FARMS
in registrant's mark and the word EMMBER in applicant's marks.
The misspelling of EMBER with two "M"s is visually insignificant
and is certainly not sufficient to distinguish one mark from
another or to change the commercial impressions the marks convey.
The two words EMBER and EMMBER are still pronounced the same and
still convey the same meaning. Moreover, the disclaimed wording
in applicant's respective marks, i.e., FOOD, CLASSIC, FOODS INC.,
and HEAT AND SERVE, while not ignored in the analysis, is, in
each case, at least merely descriptive of applicant’s goods and
therefore less significant in creating the marks' commercial
impressions.13 See In re National Data Corp., supra., and, e.g.,
Hilson Research Inc. v. Society for Human Resource Management,
supra.
In addition, design elements such as the farmhouse appearing
in registrant's mark and the diamond and/or triangle designs in
two of applicant’s marks are less important than the word
portions of those marks in creating an impression. See In re

13 We note, for example, that the word CLASSIC has a laudatory
significance in relation to applicant's goods.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
12
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Under actual
marketing conditions, the public does not necessarily have the
opportunity to make side-by-side comparisons of marks and it is
the wording which is most likely to be remembered by the relevant
public when seeing either registrant's or applicant's marks. See
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
Moreover, the farmhouse design merely reinforces the commercial
impression conveyed by the words EMBER FARMS in registrant's
mark.
In addition, it is not likely that purchasers of
registrant's food products would associate the word FARMS with
applicant's rather unappetizing image of a horse breeding
facility. The meaning and commercial impression of a mark must
be determined in relation to the goods for which registration is
sought. When considered in this context, it is clear that
purchasers are more likely to associate the word FARMS with a
place for raising livestock and selling products related thereto.
Moreover, there is no persuasive evidence in the record to
support applicant's claim that the word EMBER in registrant's
mark is weak and entitled to only a narrow scope of protection.
As indicated earlier, the third-party registrations listed in
applicant's brief are not properly of record. The only third-
party registration arguably of record is for the mark EMBER-
SMOKED (stylized) for bacon, the other registration initially
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
13
cited by the Examining Attorney. However, while EMBER-SMOKED has
a highly suggestive dictionary meaning in relation to the goods
in that registration, neither EMBER FARMS nor EMMBER alone
conveys that same suggestive meaning and, in fact, seems
arbitrary in relation to the identified goods. Thus, there are
far greater differences between EMBER-SMOKED and applicant's
marks than there are between applicant's marks and the cited
registration.
We find that even sophisticated purchasers, upon viewing
applicant's marks in connection with identical or closely related
goods, are likely to assume that applicant's EMMBER food products
come from EMBER FARMS or that there is at least some relationship
between the two companies.
Applicant's claim that there has been no actual confusion
between the marks does not convince us otherwise. Specifically,
applicant asserts that there have been no instances of actual
confusion in the marketplace despite concurrent use by the
applicant (and its predecessors) and the registrant of their
respective EMMBER and EMBER marks since 1977. In support of this
claim, applicant has submitted the declaration of its vice-
president, George Lang, who states that he is not aware of any
instance of actual confusion between these marks and that
applicant has never been contacted by registrant regarding any
alleged actual confusion.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
14
While the absence of actual confusion is a factor indicative
of no likelihood of confusion, it is a meaningful only where the
record demonstrates appreciable and continuous use by applicant
of its marks in the same markets as those served by registrant
under its mark. See, e.g., Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768 (TTAB 1992). While we have applicant's statement
of use of its marks, we have no information as to its sales or
advertising expenditures, or geographic areas served by
applicant. Moreover, there is no evidence of any use of the
registered mark, let alone information relating to the extent of
such use. Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB
1992).
Nor does the fact that registrant's EMBER FARMS mark and
applicant's EMMBER BRAND and design mark coexist on the register
prove that they coexist in the marketplace.14 Again, the relevant

14 In addition, we note that according to Office records, a Section 9
renewal of applicant's EMMBER BRAND registration has not been filed,
although the last day for filing the renewal was July 20, 2001.
Nevertheless, for purposes of this decision, we are assuming that the
registration is valid and subsisting. Moreover, the refusal to
register does not constitute a collateral attack on applicant's
incontestable registration. The Section 7(b) presumptions accorded a
registration afford prima facie rights in the mark shown therein as a
whole, not in any individual component, and even then, only for the
goods or services for which the mark is registered. See, e.g., Sweats
Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987) and In re Loew's Theatres, Inc., 769 F.2d 764, 226
USPQ 865 (Fed. Cir. 1985). In this case, none of the marks applicant
now seeks to register is the same mark as the mark previously
registered by applicant. Furthermore, the goods identified in these
applications are not the same, that is, the identified goods are
broader than those covered by the prior registration.
Ser Nos. 75/746,428; 75/746,610; 75/746,810; 75/746,827; 75/746,873;
and 75/746,886
15
consideration is whether, and the extent to which, both marks are
in use for related goods and, as we said earlier, a registration
(unless relied on by the owner) is not evidence of use of the
mark therein.
Decision: The refusal to register is affirmed.