Genesis Leverage Develop-ment Corp.v.Ulker Gida Sanayi Ve Ticaret A.S.

Trademark Trial and Appeal Board

Feb 27, 2004

No. 91150425 (T.T.A.B. Feb. 27, 2004)

Mailed:
Feb. 27, 2004
Paper No. 7
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Genesis Leverage Development Corporation1
v.
Ulker Gida Sanayi Ve Ticaret A.S.
_____
Opposition No. 91150425
to application Serial No. 76282197
filed on July 9, 2001
_____
Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC
for Genesis Leverage Development Corporation.
Howard Natter of Natter & Natter for Ulker Gida Sanayi Ve
Ticaret A.S.
______
Before Cissel, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark S’MILK (in typed form) for goods identified in
1 The caption of the notice of opposition also names Smilk, Inc.
as a party plaintiff, and includes an allegation that Smilk, Inc.
“is the exclusive licensee of the Genesis LDC trademarks.”
However, the filing fee submitted with the notice of opposition
was sufficient to cover only one party plaintiff. The Board’s
January 15, 2002 order instituting the opposition named only
Genesis Leverage Development Corporation as party plaintiff.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91150425
2
the application as “chocolate bars and chocolate-based
candies,” in Class 30.2
Opposer filed a timely notice of opposition to
registration of applicant’s mark. As its ground of
opposition, opposer alleged that applicant’s mark, as
applied to applicant’s goods, so resembles opposer’s
previously-used and registered mark SMILK as to be likely to
cause confusion, to cause mistake, or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d). Applicant filed an
answer by which it denied the salient allegations of
opposer’s claim.
At trial, opposer submitted the following evidence via
two notices of reliance: a status and title copy of its
pleaded Registration No. 1,631,788, which is of the mark
SMILK (in typed form) for “fruit flavored flavorings, other
than essential oils, for milk beverages” in Class 30;3 a
status and title copy of its pleaded Registration No.
1,921,052, which is of the mark SMILK (in typed form) for
“flavored milk” in Class 29;4 an electronic archive copy of
an article from the November 25, 1996 issue of Time
2 Serial No. 76282197, filed July 9, 2001. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
3 Registration No. 1,631,788, issued January 15, 1991. Section 8
affidavit accepted, Section 15 affidavit acknowledged. Renewed
for a term of ten years from January 15, 2001.
4 Registration No. 1,921,052, issued September 19, 1995. Section
8 affidavit accepted.
Opposition No. 91150425
3
magazine, entitled “Milk Shakes It Up”; and one of its
product labels.5 Applicant submitted no evidence.
Opposer filed a brief on the case, but applicant did
not. Neither party requested an oral hearing.
In view of opposer’s submission of status and title
copies of its pleaded registrations, we find that opposer
has established its standing to oppose. See, e.g., Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). We further find that opposer’s
Section 2(d) priority is not in issue as to the goods
identified in opposer’s registrations. See King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). We turn, then, to a determination of
opposer’s likelihood of confusion claim.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
5 This label is not the type of evidence which may be submitted
by notice of reliance. See Trademark Rule 2.122(e), 37 C.F.R.
§2.122(e). However, applicant has not objected to its
Opposition No. 91150425
4
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to the question of whether applicant’s
mark and opposer’s mark, when compared in their entireties
in terms of appearance, sound and connotation, are similar
or dissimilar in their overall commercial impressions. 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 impression that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We find that applicant’s mark, S’MILK, and opposer’s
mark, SMILK, are identical in terms of sound, and similar in
terms of appearance. However, we find that the marks have
different connotations.6 Opposer’s mark is likely to be
viewed as a combination of the words “smile” and “milk.”
That opposer intends the mark to have this connotation is
submission, and we therefore have considered it for whatever
probative value it may have.
6 Opposer offers no argument on the issue of whether the marks
have similar connotations.
Opposition No. 91150425
5
evidenced by the product label opposer has made of record,
which includes the wording “SMILK is milk with a SMILE.”
Likewise, the Time magazine article made of record by
opposer refers to opposer’s product as “Smilk (that’s
‘smile’ plus ‘milk’).”
In contrast, the presence of the apostrophe in
applicant’s mark S’MILK makes it unlikely that the mark
would be viewed as being derived from or as referring to the
word “smile.” Rather, the most likely connotation
purchasers would attribute to applicant’s mark is that it is
a play on “s’mores,” the generic name of the well-known
chocolate, marshmallow and graham cracker treat.7 This is
especially so since applicant’s goods are identified as
chocolate bars and chocolate-based candies.
On balance, we find that the marks have different
connotations, but they are somewhat more similar than
dissimilar in terms of their overall commercial impressions.
We turn next to a consideration of the similarity or
dissimilarity between the parties’ goods, under the second
du Pont factor. It is not necessary that the respective
7 Webster’s New World Dictionary of Culinary Arts (2d ed. 2001),
at 426, defines “s’mores” as “confections made by sandwiching
milk chocolate and marshmallows between graham crackers and
heating the sandwich, often over an open fire, until the
chocolate melts.” The Board may take judicial notice of
dictionary definitions. See, e.g., University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); Continental
Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393
(TTAB 1999).
Opposition No. 91150425
6
goods be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they originate
from or are in some way associated with the same source or
that there is an association or connection between the
sources of the respective goods. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In
re International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Applying these principles in the present case, we find
that opposer has failed to present any evidence upon which
we might base a finding that applicant’s goods and opposer’s
goods are sufficiently related that confusion is likely to
result from the parties’ use thereon of their respective
marks. It is not apparent on this record what marketplace
relationship, if any, exists between the goods identified in
opposer’s Registration No. 1,631,788, i.e., “fruit flavored
flavorings, other than essential oils, for milk beverages,”8
8 We note that in the notice of opposition and again in its brief
on the case, opposer incorrectly refers to the goods covered by
this registration as “flavored flavorings…” rather than “fruit
Opposition No. 91150425
7
and applicant’s “chocolate bars and chocolate-based
candies.” The identification of goods in opposer’s
Registration No. 1,921,052, i.e., “flavored milk,” is worded
broadly enough that we must presume it to include
“chocolate-flavored milk,” and it thus could have
“chocolate” in common with applicant’s goods. However,
there is no evidence in the record which establishes that
chocolate-flavored milk and “chocolate bars and chocolate-
based candies” are goods which purchasers would assume to
originate from a single or related source.
In its brief, opposer asserts that opposer’s goods and
applicant’s goods are related because “[t]rademarks such as
HERSHEYS and NESTLE are in used [sic – use] in the market
for both milk beverages, powdered and syrup flavorings for
milk, and candies and snacks.” (Brief at 2.) However, there
is simply no evidence in the record to support this factual
assertion,9 nor is it the type of fact of which we can take
judicial notice. See, e.g., Los Angeles Bonaventure Co. v.
Bonaventure Associates, 4 USPQ2d 1882 (TTAB 1987)(no
judicial notice taken as to whether other companies have
expanded from restaurant services to hotel services under a
flavored flavorings…,” thereby omitting a significant
characteristic of the goods and impermissibly expanding the
registration’s scope.
9 Opposer made this same factual allegation in its notice of
opposition, and applicant denied it in the answer, thereby
Opposition No. 91150425
8
single mark); Abbott Laboratories v. Tac Industries, Inc.,
217 USPQ 819 (TTAB 1981)(no judicial notice taken as to use
of antimicrobial agents in the floor covering industry).
See also In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2
(TTAB 1998)(no judicial notice taken of third-party
registrations); Cities Service Co. v. WMF of America, Inc.,
199 USPQ 493 (TTAB 1978)(no judicial notice of third-party
registrations and listings in trade directories, where
copies not made of record).
After careful consideration of the evidence in the
record, we cannot conclude that applicant’s goods and
opposer’s goods are related in the marketplace in such a
manner that confusion is likely to result from the parties’
use of their respective marks. Although the marks are
somewhat similar, the absence of evidence establishing a
marketplace relationship between the goods precludes us from
concluding that a likelihood of confusion exists.
Decision: The opposition is dismissed.
putting opposer on notice that it would be required to prove the
allegation with evidence at trial. Opposer has failed to do so.