Honest Tea, Inc.v.Annona Company, L.L.C.

Trademark Trial and Appeal Board

Apr 9, 2009

No. 91178652 (T.T.A.B. Apr. 9, 2009)

Mailed: April 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Honest Tea, Inc.
v.
Annona Company, L.L.C.
_____

Opposition No. 91178652
_____

Maria E. Recalde of Sheehan Phinney Bass & Green, PA, for
Honest Tea, Inc.

Felix L. Fischer, Esq., for Annona Company, LLC.
_____

Before Quinn, Drost, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Honest Tea, Inc. (“opposer”) has filed this opposition
to the registration by Annona Company, L.L.C.(“applicant”)1
of the mark HONEST FOODS for “bakery goods; processed
cereals” in International Class 30.2 Opposer brings this
action on the grounds of priority and likelihood of

1 During the course of this opposition proceeding, Annona
Company, L.L.C. was substituted for the original applicant, Mark
Oliver, Inc., as applicant and defendant in this action.
2 Application Serial No. 78954769, filed August 17, 2006, under
Section 1(b) of the Trademark Act, 15 USC §1051(b), claiming a
bona fide intent to use the mark in commerce, and disclaiming the
exclusive right to use “FOODS” apart from the mark as shown.
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178652
2
confusion under Section 2(d) of the Trademark Act; 15 USC
§1052(d). In the notice of opposition, opposer asserted
that it is the owner of a federal trademark registration for
the mark HONEST TEA, for “tea-based beverages,” as well as
the successor-in-interest to common-law rights in the mark
HONEST FOOD for, “among other things, packaged foods,
namely, pastas; coffee; breads; pastry and bakery goods”
that predate applicant’s constructive use date for HONEST
FOODS. (Notice of Opposition, para. 1).
In its answer, applicant denied the salient allegations
of the notice. Both parties filed trial briefs.3 Opposer
filed a reply brief.
The Record and Pending Motion to Strike
The record in this case includes the pleadings and the
file of the involved application. The record further
includes the following, as stipulated by both parties in
their respective briefs:
1. Testimonial depositions of:
a. Mark Smith, representative of Honest Licensing
LLC, dated June 18, 2008.
b. Mark Smith, representative of Honest Licensing
LLC, dated August 28, 2008.

3 Both parties filed extensive exhibits with their briefs. We
have considered the exhibits only to the extent they were
otherwise properly made of record in this proceeding.
Opposition No. 91178652
3
c. William Baraket, General Manager of Nick &
Toni’s Café, dated August 28, 2008.
d. Seth Goldman, President, CEO, and co-founder of
Honest Tea, Inc., dated June 19, 2008.
e. Charles Mark Oliver, owner of Mark Oliver,
Inc., and partner in Annona Company, L.L.C.,
dated August 26, 2008.
2. Applicant’s notices of reliance,4 including:
a. Various printed publications;
b. Declaration of Toni Ross;
c. Deposition testimony of Jeffrey Salaway, from
TTAB Cancellation No. 25,956, dated October 8,
1998.
d. Prosecution history of U.S. Trademark
Registration No. 2106349.
In addition, opposer’s trial brief listed opposer’s
Registration No. 2271571, for HONEST TEA as being of record
in this proceeding. Applicant took issue with that
assertion via a motion to strike (labeled Objection to Entry
of Evidence into the Record) filed on January 20, 2009.
According to applicant, opposer never entered its HONEST TEA
registration into the record since (1) opposer did not file

4 Some of these documents were not properly made of record via a
notice of reliance. However, since opposer failed to object to
their submission as evidence, and furthermore stipulated them
into the record via opposer’s trial brief, we deem all of the
listed items to be of record in this proceeding.
Opposition No. 91178652
4
a proper status and title copy either via notice of reliance
or via witness authentication during a testimonial
deposition pursuant to Trademark Rule 2.122(d)(2), 37 CFR
§2.122(d)(2) (“A registration owned by any party to a
proceeding may be made of record in the proceeding by that
party by appropriate identification and introduction during
the taking of testimony or by filing a notice of reliance,
which shall be accompanied by a copy (original or photocopy)
of the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration.”), and (2) opposer did
not establish status and title via an admission by applicant
on the record. In response to the motion to strike, opposer
attempts to rely on an alleged admission in applicant’s
answer. See TBMP §704.06(a)(2d ed. rev. 2004), observing
that “statements in pleadings may have evidentiary value as
admissions against interest by the party that made them.”
The exchange referred to by opposer went as follows:
Notice of Opposition:
“1. Honest Tea, Inc. (“Opposer”) is the owner of
(a) the federally registered mark HONEST TEA® used
in connection with the sale of tea-based beverages
in International Class 30 (used in commerce since
in or about May 1998), and (b) by assignment, the
common law rights, together with the associated
goodwill, in the mark HONEST FOOD used in
connection with the sale of, among other things,
packaged foods, namely, pastas; coffees; breads;
pastry and bakery goods (used in commerce since in
or about April 1996).

Opposition No. 91178652
5
Answer:
“1. Applicant admits that, according to the U.S.
Patent and Trademark Office records, Opposer is
the owner of record for a federally registered
mark for HONEST TEA. Applicant is without
knowledge or information sufficient to form a
belief as to the truth of the remaining
allegations of the paragraph and therefore denies
the same.”

We agree with applicant that its statement regarding
the records of the Office does not constitute an admission
regarding the status of opposer’s HONEST TEA registration.
We further find that opposer has not otherwise entered the
pleaded HONEST TEA registration into the record either via
notice of reliance or via authentication during a
testimonial deposition. Accordingly, we grant applicant’s
motion to strike and give no consideration in this decision
to opposer’s pleaded registration for HONEST TEA.
Findings of Fact
Applicant filed its intent-to-use application for
HONEST FOODS on August 17, 2006. Shortly thereafter,
applicant, doing business as HONEST FOODS, began marketing
snack bars under the mark HONEST FOODS. Co-owner Charles
Mark Oliver began attending natural-food trade shows in
October 2006 to determine market interest in the HONEST
FOODS snack bars. He brought press releases, power point
presentations, and detailed price lists. Orders began right
away, and applicant began shipping snack bars under the mark
HONEST FOODS in December 2006. In the timeframe between
Opposition No. 91178652
6
January and October 2007, applicant recorded $167,876 in
sales for its snack bars marketed under the HONEST FOODS
name.
Honest Licensing, LLC began using the mark HONEST FOOD
in 1996, in connection with the sale of certain prepackaged
foods and restaurant services. In October 1997, Honest
Licensing LLC obtained a trademark registration for HONEST
FOOD, for “packaged foods, namely, pastas; coffee; breads,
pastry and bakery goods” in International Class 30, and
“restaurant, bar, catering, and bakery services and retail
stores featuring foods, beverages and pastries” in
International Class 42.5 Honest Licensing LLC operated a
take-out service in Manhattan under the name Honest Food
from 1996 until 1997, at which time it changed the operation
to a full-service restaurant under the name Nick & Toni’s
Café. Honest Licensing LLC also operated restaurants in
nearby Long Island under the name La Fondita and Nick &
Toni’s Restaurant. Although Honest Licensing ceased its
take-out operation under the name Honest Food in 1997, it
had only used up about 10% of its inventory of stickers
bearing the HONEST FOOD mark, as depicted below:

5 Registration No. 2106349, in “typed drawing” format, issued
October 21, 1997, based on first use and first use in commerce of
April 1, 1996 for the Class 30 goods and February 8, 1996 for the
Class 42 services, and disclaiming the exclusive right to use the
term “FOOD” apart from the mark as shown. Cancelled for
registrant’s failure to file a Section 8 affidavit of continued
use.
Opposition No. 91178652
7

Accordingly, the owners decided to continue using the HONEST
FOOD stickers on the packaging of take-out items from their
restaurants as well as “doggie bags” containing leftover
food. The general manager of Nick & Toni’s Café estimated
that the stickers were placed on about 20 to-go orders and
35-40 doggie bags per week between 1997 and 2004. The menu
at Nick & Toni’s Café encompasses an assortment of American
cuisine including such items as salads, fish and meat
entrees, and desserts. There is no indication that the
HONEST FOOD stickers were limited to packaging of any
Opposition No. 91178652
8
particular items on the menu. The inventory ran out
somewhere between 2004 and 2006. Meanwhile, Honest
Licensing LLC’s registration for HONEST FOOD lapsed. The
registration was cancelled for both classes, on October 21,
2003 for failure by Honest Licensing LLC to file a Section 8
affidavit of continued use.
Opposer has marketed and sold tea-based beverages under
the mark HONEST TEA since 1998. Over the years, the
founders considered expanding their offering of goods to
include chocolate and other snack items. In early 2007, as
they explored the possibility of marketing a snack bar under
the mark HONEST FOOD, opposer’s principals became aware of
applicant’s HONEST FOODS snack bars, as well as applicant’s
pending trademark application for HONEST FOODS.
Accordingly, opposer sought to obtain an assignment of
rights for the name HONEST FOOD from Honest Licensing LLC in
an attempt to obtain priority on the HONEST FOOD mark. On
May 1, 2007, the parties executed an agreement whereby
Honest Licensing LLC assigned to opposer “its entire right,
title and interest, throughout the world, in and to the mark
HONEST FOOD, and any and all goodwill of the business in
connection with which the trademark is used, associated with
or related to (collectively the “Mark”).” Shortly
thereafter, opposer began its first test market of natural
Opposition No. 91178652
9
food bars under the mark HONEST FOOD, with sales resuming
after market analysis was completed.
Standing and Priority
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading]."). To establish standing in an opposition,
opposer must show both “a real interest in the proceedings
as well as a ‘reasonable’ basis for his belief of damage.”
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). It is not necessary that opposer
establish its own prior rights in the mark at issue in order
to prove standing, and the standard is applied liberally.
Id.
Opposer pleaded its registration for HONEST TEA in its
notice of opposition. However, opposer did not introduce
that registration into the record. That is, opposer
introduced no evidence during its testimony period to show
that it is the owner of its pleaded registration and that
the registration is valid and subsisting in accordance with
Trademark Rule 2.122(d); 37 CFR §2.122(d). The Board does
not take judicial notice of registrations. See, e.g., Demon
Opposition No. 91178652
10
Int’l LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008)
(opposition dismissed where opposer failed to submit proper
status and title copies of its pleaded registrations and
thus failed to prove standing and priority); Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230, n.2 (TTAB 1992).
We note that opposer argued in response to applicant’s
motion to strike opposer’s registration from the record that
applicant had admitted the validity of the registration in
answer to the notice. However, as discussed above, we do
not consider applicant’s answer to constitute an admission
of opposer’s standing in this proceeding. This is
particularly so, since opposer’s brief did not even argue
priority and likelihood of confusion based on opposer’s
HONEST TEA registration, but rather based its entire
argument on opposer’s alleged acquisition of common-law
rights to HONEST FOOD. Accordingly, we deem opposer’s
pleading as to HONEST TEA to be waived, and we cannot accord
standing to opposer on that basis.
Opposer also claims standing and priority based on its
alleged acquisition of common-law rights to HONEST FOOD from
Honest Licensing LLC. We have determined as a factual
finding that opposer did indeed execute an assignment
agreement with Honest Licensing LLC on May 1, 2007.
Applicant argues that opposer lacks standing in this
proceeding nevertheless either because (1) the use by Honest
Opposition No. 91178652
11
Licensing LLC of HONEST FOOD only on stickers affixed to
take-out food and doggie bags after 1997 was not sufficient
trademark use; (2) Honest Licensing LLC had abandoned use of
its HONEST FOOD mark once the inventory of HONEST FOOD
stickers was depleted, somewhere between 2004 and 2006; or
(3) the assignment was an invalid assignment in gross.
Regarding applicant’s first argument, we find the use
of HONEST FOOD stickers by Honest Licensing LLC to
constitute valid trademark use. In an inter partes
proceeding, a party may establish its own prior proprietary
rights in a mark through ownership of a prior registration,
actual use or through use analogous to trademark use, such
as use in advertising brochures, trade publications,
catalogues, newspaper advertisements and Internet websites
which create a public awareness of the designation as a
trademark identifying the party as a source. See Trademark
Act §§2(d) and 45, 15 U.S.C. §§1052(d) and 1127. See also
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994). Honest Licensing LLC
had a valid and subsisting trademark registration through
October 21, 2003. The evidence indicates that Honest
Licensing LLC may have continued the use of the HONEST FOOD
stickers as late as 2006. Although the federal registration
expired in 2003, we find that the record establishes that
Opposition No. 91178652
12
Honest Licensing LLC maintained common-law rights in the
mark HONEST FOOD for its to-go salads, fish and meat
entrees, and desserts.
This brings us to applicant’s allegation of
abandonment. Applicant argues that once the inventory of
HONEST FOOD stickers was depleted, sometime between 2004 and
2006, the owners of Honest Licensing LLC evinced an intent
not to resume use of the mark. The relevant portion of the
Lanham Act establishing criteria for abandonment of a mark
reads as follows:
“A mark shall be deemed to be ‘abandoned’. . .
(1) When its use has been discontinued with intent
not to resume such use. Intent not to resume may
be inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of
abandonment. ‘Use’ of a mark means the bona fide
use of such mark made in the ordinary course of
trade, and not made merely to reserve a right in a
mark.”

The evidence here does not establish the three-year
period of nonuse necessary to establish prima facie evidence
of abandonment in compliance with the statute. Even if we
accept that the inventory of stickers was depleted as early
as 2004, without a more specific date, we cannot confirm
that the trademark was not in use for at least three years,
since the assignment to opposer was executed on May 1, 2007.
There also is no evidence of record to indicate that the
owners of Honest Licensing LLC made any kind of statement to
the public that they had renounced use of HONEST FOOD as a
Opposition No. 91178652
13
mark. Rather, co-owner Mark Smith testified as to their
intent to resume use of the mark when the opportunity arose:
Our intention was that it was a decent name that
we spent a lot of money promoting and advertising
and that somewhere down the road, I mean, we had
aspirations and thoughts of doing cookbooks, you
know, product food lines, you know, as an
extension of what we had started at Honest Food,
although it might not have worked as a retail
environment; that there might be a package food
business that we might use it for. Outside of
that, I wouldn’t remember anything that we
necessarily had in mind.
(Smith depo. 8/28/08 at 65:11-21)

Since the record does not show the requisite three-year
period of non-use to create a presumption of abandonment,
the burden of establishing an intent to abandon the mark
falls on applicant. Imperial Tobacco Ltd. v. Philip Morris,
Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990).
Applicant has not met this heavy burden. Id. There is no
evidence of record to dispute Honest Licensing LLC’s claim
that it intended to resume use of the HONEST FOOD mark for
goods or services related to the to-go salads, fish and meat
entrees, and desserts for which it had established common-
law rights.
Furthermore, since the evidence indicates the inventory
of HONEST FOOD stickers may have run out as late as 2006,
there may have been less than a year between the date the
last sticker was used and the date the mark was assigned to
opposer. On that record, we are unwilling to find
Opposition No. 91178652
14
sufficient foundation to support a showing of abandonment by
Honest Licensing LLC before the May 1, 2007 assignment.
Regarding applicant’s third argument, that the
assignment was invalid, we find no such evidence of record.
Rather, the evidence indicates that opposer paid $10,000 to
an unrelated company in an arms-length transaction to
acquire valid and subsisting common-law rights in the mark
HONEST FOOD. The assignment attests on its face that it
includes the associated “good will” that Honest Licensing
LLC had built up in its HONEST FOOD mark, and again there is
no evidence to the contrary.
Accordingly, we find that opposer has established valid
and subsisting common-law rights to the mark HONEST FOOD for
to-go salads, fish and meat entrees, and desserts, and
therefore has established both standing and priority in this
opposition proceeding on that basis.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Opposition No. 91178652
15
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are
mindful that 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 so that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Opposition No. 91178652
16
Visually, applicant’s mark differs from opposer’s only
by the addition of the letter “S” at the end, which merely
indicates a plural, HONEST FOODS instead of HONEST FOOD.
There is no apparent difference in connotation or commercial
impression between the singular and the plural as applied to
the respective goods of opposer and applicant.6 See Wilson
v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)
(“It is evident that there is no material difference, in a
trademark sense, between the singular and plural forms of
the word ‘Zombie’ and they will therefore be regarded here
as the same mark.”). Phonetically, the marks are almost
identical as well, again with only the difference of the “S”
as the end of applicant’s mark. Accordingly, this du Pont
factor heavily favors finding a likelihood of confusion.
The Goods and Channels of Trade
Preliminarily, we note that the greater the degree of
similarity between the marks, the lesser the degree of
similarity between the goods or services necessary to
support a finding of likelihood of confusion. In re Opus
One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Furthermore, it is well-established that the goods or

6 Applicant argued in its answer that the term HONEST is “laudatory in
nature” and that there are “numerous active registrations” incorporating
the term. However, applicant did not submit any such evidence into the
record, and furthermore waived these affirmative defenses by failing to
argue them in its trial brief.
Opposition No. 91178652
17
services of the parties need not be similar or competitive,
or even offered through the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods or services of the
parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
Int’l Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB
1978). The issue, of course, is not whether purchasers
would confuse the goods or services, but rather whether they
would be confused into believing that they derive from the
same source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Opposer has established common-law rights by assignment
to the mark HONEST FOOD for to-go salads, fish and meat
entrees, and desserts. Applicant seeks to register HONEST
FOODS for “bakery goods; processed cereals.” Clearly, there
is a potential for overlap between these items. Certainly,
if we look at their use in commerce, both applicant and
opposer have been offering snack bars under their respective
trademarks. We find that with such similar marks on such
Opposition No. 91178652
18
similar goods, there is a likelihood of consumer confusion
as to source. Applicant has not argued to the contrary,
arguing instead that the likelihood of confusion should
inure to its benefit rather than to opposer’s since
applicant apparently began offering its snack bars shortly
before opposer did. However, since we find that opposer has
priority based on its acquisition of common-law rights,
opposer maintains priority on items such as snack bars that
are subsumed in those rights.
Likewise, we find that opposer’s and applicant’s snack
bars are sold through the same and similar channels of
trade. Again, applicant does not argue to the contrary. As
a result, these du Pont factors also favor finding a
likelihood of confusion.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use and the relevant du
Pont factors, as well as all of the parties’ arguments with
respect thereto. We conclude that opposer has established
priority of use of a nearly identical mark. We have also
found opposer’s to-go salads, fish and meat entrees, and
desserts to be similar and overlapping with applicant’s
“bakery goods; processed cereals,” and to move in similar
and overlapping channels of trade. Accordingly, we find a
likelihood of confusion.
Opposition No. 91178652
19
Decision: The opposition is sustained.