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

Trademark Trial and Appeal Board

Jun 2, 2009

No. 91178652re (T.T.A.B. Jun. 2, 2009)

Mailed: June 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

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

Opposition No. 91178652
On Request for Reconsideration
_____

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:

On April 9, 2009, the Board sustained the opposition
brought by Honest Tea, Inc. (“opposer”) against the
registration by Annona Company, L.L.C.(“applicant”) of the
mark HONEST FOODS for “bakery goods; processed cereals” in
International Class 30 on the grounds of priority and
likelihood of confusion under Section 2(d) of the Trademark
Act; 15 USC §1052(d). Applicant has timely filed a request
for reconsideration of the Board’s decision, arguing that
the Board made an error in finding a valid assignment of the
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178652
2
mark HONEST FOOD to opposer by its predecessor-in-interest.
Applicant filed a brief in support of its request for
reconsideration. Opposer filed a brief in opposition.
The points that applicant makes in its request for
reconsideration were fully argued by applicant in its trial
brief and were addressed by the Board in our April 9
decision. In the “Findings of Fact,” the Board determined
that Honest Licensing, LLC, opposer’s predecessor-in-
interest, began using the mark HONEST FOOD in 1996, in
connection with the sale of certain prepackaged foods and
restaurant services. (April 9 Decision at 6). The Board
further found that Honest Licensing, LLC continued using
HONEST FOOD as a common-law mark at least until 2004 for to-
go salads, fish and meat entrees, and desserts. Id. at 8.
The Board then found that on May 1, 2007, Honest Licensing
LLC executed an agreement to opposer of “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”).” Id.
The Board acknowledged and addressed applicant’s
arugments regarding the validity of the assignment from
Honest Licensing LLC to opposer:
Applicant argues that opposer lacks standing in
this proceeding nevertheless either because (1)
the use by Honest Licensing LLC of HONEST FOOD
only on stickers affixed to take-out food and
Opposition No. 91178652
3
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.
Id. at 10-11.

After a discussion of applicant’s arguments and the
applicable law, we found that:
[O]pposer 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.
Id. at 14.

The Board went on to examine the du Pont factors, and
determined that there was a likelihood of confusion, citing,
inter alia, In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973); 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 Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Since applicant’s request for reconsideration does not
establish that the Board erred in reaching the final
decision, the request for reconsideration is denied. The
decision dated April 9, 2009 stands.