Kellogg Co.v.The Earthgrains Co.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 91110121 (T.T.A.B. Sep. 30, 2003)

Mailed: September 30, 2003
Paper No. 34
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kellogg Company
v.
The Earthgrains Company
_____
Opposition No. 91110121
to application Serial Nos. 75213336; 75213338;
and 75213340
filed on December 16, 1996
_____
Jeffrey H. Kaufman and Jonathan Hudis of Oblon, Spivak,
McClelland, Maier & Neustadt, P.C. for Kellogg Company.
Bryan K. Wheelock of Harness, Dickey & Pierce, P.L.C. for
The Earthgrains Company.
______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On December 16, 1996 The Earthgrains Company filed the
following intent-to-use applications: Serial No. 75213336
for the mark MORNING GOODS (“GOODS” is disclaimed) for
“refrigerated bakery products, namely, biscuits, cookies,
english muffins, dinner rolls, pie crust, breadsticks, pizza
crust, frozen garlic bread, cinnamon rolls, danish and
toaster pastries”; and Serial No. 75213340 for the mark
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91110121
2
MORNING GOODS (“GOODS” is disclaimed} and Serial No.
75213338 for the mark MORNING GOODNESS, both for “bread,
muffins, buns, rolls, croissants, danish, cakes, snack
cakes, donuts, bagels and bakery products.”
Registration of each application has been opposed by
the Kellogg Company. As grounds for opposition, opposer
alleges that since prior to the filing date of applicant’s
application, opposer has been engaged in the manufacture,
distribution, sale, advertising and promotion of food
products, including food products typically consumed in the
morning; that opposer has a business interest in using the
words “morning,” “goods,” and/or “goodness”; that “MORNING
GOODS” and “MORNING GOODNESS” are merely descriptive of the
goods recited in applicant’s respective applications; and
that “[u]pon information and belief, the bona fides of
Applicant’s intent-to-use the alleged MORNING GOODS and
MORNING GOODNESS trademarks in commerce is not apparent from
the materials of record in the subject applications, and
Opposer therefore challenges same and leaves the Applicant
to its proofs with regard to the nature and sufficiency of
its intent-to-use its alleged marks in commerce at the time
of filing [its applications].”
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
Opposition No. 91110121
3
The record consists of the pleadings; the file of the
involved application; and the testimony (with exhibits) of
opposer’s witnesses Andrew Weinstein, Beth Ann Zalner, and
David Herdman.1 In addition, opposer submitted a notice of
reliance on dictionary definitions of the words “good,”
“goodness,” and “morning”; copies of articles from the NEXIS
database; and certain of applicant’s responses to opposer’s
interrogatories and requests for admission.
Applicant did not take testimony, but it submitted a
notice of reliance on copies of third-party registrations of
marks that include the words “morning,” or “goodness;” and
copies of registrations owned by opposer of marks that
include the words “morning” or “good.”
1 Applicant’s motion to strike exhibits 2, 3, and 4 introduced
during the testimonial deposition of opposer’s witness Mr.
Weinstein and the testimony relating thereto is denied. The
exhibits and testimony at issue concern third-party uses of the
words “morning,” “good,” and/or “goodness.” Applicant maintains
that during discovery, it requested that opposer produce all
documents relating to third-party uses of these words; that after
the close of discovery opposer obtained additional materials
relating to third-party uses; that opposer was under a duty to
supplement its responses; and that opposer did not supplement its
responses by producing the materials which are the subject of
opposer’s exhibits 2, 3, and 4. Fed. R. Civ. P. 26(e)(2)
provides that a party who has responded to a request for
discovery has a duty to supplement its response to include
information thereafter acquired “if the party learns that the
response is in some material respect incomplete or incorrect and
if the additional or corrective information has not otherwise
been made known to the other part[y] during the discovery process
or in writing.” The record shows that opposer did produce a
number of documents relating to third-party uses in response to
applicant’s request for production of documents. Although
opposer obtained additional materials, opposer’s response was not
incorrect or incomplete in any material respect.
Opposition No. 91110121
4
Briefs have been filed, but an oral hearing was not
requested.
At the outset, we note that it is clear from the record
that opposer is a competitor in the field of breakfast
foods. Thus, opposer has established its standing in this
proceeding.
We consider first opposer’s claim that applicant does
not have a bona fide intent to use the marks in commerce on
the identified goods. Opposer argues that applicant’s
failure, during trial, to produce documentary evidence
regarding applicant’s actual or planned use of the marks
proves that applicant lacks a bona fide intent to use the
marks in commerce. In support of its position, opposer
relies on Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993).
Applicant, in its brief on the case, argues that it
does have a bona fide intent to use the marks in commerce,
but has delayed going forward with its plans because of the
opposition.
In Commodore, at page 1507, the Board stated:
… in evaluating an applicant’s bona fide intent
to use a mark in commerce on the basis of a
myriad of objective factors, certain
circumstances may support or confirm the bona
fide nature of an applicant’s intent while
others may cast doubt thereon or even completely
disprove it. Although admittedly a close
question, we hold that absent other facts
which adequately explain or outweigh the
failure of an applicant to have any
Opposition No. 91110121
5
documents supportive of or bearing upon
its claimed intent to use its mark in
commerce, the absence of any documentary
evidence on the part of an applicant
regarding such intent is sufficient to
prove that the applicant lacks a bona fide
intention to use the mark in commerce as
required by Section 1(b).
The evidence of record regarding applicant’s intent,
apart from the declaration in applicant’s application,
consists of applicant’s responses to opposer’s
interrogatories. Among its responses, applicant indicated
that it had not prepared any advertising or promotional
materials; that it had not prepared any sales or budget
projections; that it had not conducted any market research;
and that it had not entered into any licensing agreements.
However, we note that in response to opposer’s interrogatory
no. 3, applicant stated that “applicant has prepared labels
for use during test marketing for the product” and in
response to interrogatory no. 7, applicant stated that
“applicant has used the mark MORNING GOODNESS in conjunction
with the EARTHGRAINS mark on packaging for test marketing
the product.” Opposer did not request applicant to produce
these materials.
Under the circumstances, we cannot say that applicant
failed to have any documentary or other evidence supportive
of or bearing on its intent to use the applied-for marks in
commerce. We should add that it is certainly not
unreasonable for applicant to delay its plans until the
Opposition No. 91110121
6
opposition has been decided. In view of the foregoing, we
find that opposer has not proven its claim that applicant
does not have a bona fide intent to use the marks in
commerce.
We consider next the issue of whether MORNING GOODS and
MORNING GOODNESS, when applied to the identified goods, are
merely descriptive thereof.
A mark is descriptive if it forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods. In re Abcor Development
Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978). See also:
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2d Cir. 1976). Moreover, in order to be
descriptive, the mark must immediately convey information as
to the ingredients, qualities or characteristics of the
goods with a “degree of particularity.” Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-
1205 (TTAB 1981). Whether a term is merely descriptive is
determined not in the abstract, but rather in relation to
the goods for which registration is sought, the context in
which it is being used in connection with those goods and
the possible significance that the term would have to the
average purchaser of the goods because of the manner of its
use. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979.
Opposition No. 91110121
7
Opposer’s evidence
Opposer took the testimony of its paralegal/licensing
coordinator Beth Ann Zalner. Ms. Zalner testified that
opposer is in the business of producing and marketing ready-
to-eat cereals, cereal-based food products, snack bars,
waffles and pancakes. Opposer promotes its products through
television, radio, and print advertising. Opposer also uses
“end cap displays” and “shelf talkers” in grocery stores.
Ms. Zalner testified that, based on her experience, the term
“morning goods” is used in the food industry to describe a
category of products purchased by consumers for consumption
at breakfast or the early part of the day. Mr. Zalner
identified examples of opposer’s and third-parties’ use of
the words “morning,” “good(s),” and “goodness” in
advertising, including television commercials, and on
product packaging. For example, opposer has used the phrase
“Kellogg’s Crispix Cereals for Good Mornings” on its cereal
cartons. Third parties have used the phrases “Breakfast
with Post® Grape Nuts: Helps keep you going strong all
morning long” and “Great Tasting Wholesome Goodness From
Quaker®” on cereal cartons.
In addition, opposer took the testimony of its
corporate counsel David Herdman who testified that the term
“morning goods” is used in the food industry to describe the
Opposition No. 91110121
8
category of products purchased by consumers for consumption
at breakfast or the early part of the day.
Opposer also took the testimony of Andrew Weinstein, a
legal assistant with the law firm representing opposer. Mr.
Weinstein canvassed several grocery stores in the
Washington, D.C. area to locate third-party breakfast-style
products with packaging containing the words “morning,”
“good” and/or “goodness.” Among those identified by Mr.
Weinstein testimony include: “Enjoy the goodness of the
Grape-Nuts® family of cereals”; “The whole grain goodness of
Cheerios is food for your whole family”; and “With the taste
inspired by Fresh Baked Cinnamon Raisin Bread, every
spoonful of delicious Post Cinna-Cluster Raisin Bran gets
the whole family crunching on the morning goodness they
need.”
Further, opposer submitted with its notice of reliance
the following excerpts from Merriam Webster’s Collegiate
Dictionary (10th ed. 1996):
good: plural: something manufactured or produced
for sale: wares, merchandise.
goodness: the quality or state of being good; the
nutritious, flavorful, or beneficial part of
something.
morning: the time from sunrise to noon.
Lastly, opposer submitted with its notice of reliance,
twenty articles from the NEXIS database that show use of the
Opposition No. 91110121
9
term “morning goods” in the food industry to describe bakery
products. The following are representative excerpts:
Country oven organic improver, is an all
purpose improver in powdered form, formulated
for production of organic bread, rolls and
morning goods.
(Food Manufacture, February 2000);
The bread sector dominates the scene,
accounting for almost 82% of global volume
sales (at 88.3 million tons) and 61% of value
(US$ 109 billion). Breakfast (or morning
goods) were listed as the most dynamic
sector, growing by 18% to exceed…
(Quick Frozen Foods International,
October 1, 1999);
Morning goods (such as croissants, brioches
and muffins), cakes and pastries have benefited
from the snacking trend, according to Euromonitor,
(Food Engineering International, April 1, 1997);
All types of retail bakers benefit from the
higher visibility these products command.
Where specialty shops haven’t gained a
foothold, retailers find that there’s increased
demand for bagels. Not only are they making
inroads as morning goods, but they’re also
gaining popularity as a sandwich roll.
(Bakery Production and Marketing, June 24,
1994);
Instead, the entire range of other products
normally offered in bakeries is up, with the
exception of Danish and sweet goods. While
these morning goods contributed 11% to overall
sales in 1988, the most recent …
(Bakery Production and Marketing, November 24,
1993);
Of course, no one can accurately predict
just how many customers will come in each
day, although the Ortmeires keep careful
records to hold their daily projections.
They try to make sure all morning goods
sell out each day. However, Sandra,
Opposition No. 91110121
10
Susanne and Kathleen alert the bakers
when morning goods start running low
too early.
(Bakery Production and Marketing, April
24, 1993);
The recent launch of the Pillsbury Hotbake
range is a fascinating example of
positioning a food brand as a total
experience, rather than just a product.
Hotbake is a chilled, ready-to-bake
dough for Danish Whirls, bread twists
etc and a wide range of morning goods to
bake at home.
(Marketing, April 2, 1992); and
The store’s self-service areas include
1) packaged bread case; 2) morning goods
and sweets case; 3) bagel case; …
(Bakery Production and Marketing,
May 24, 1989).
Applicant’s evidence
As indicated, applicant did not take testimony.
However, applicant did submit copies of over forty third-
party registrations of marks that include the words
“morning,” or “goodness” for food products and copies of
four registrations owned by opposer that include the words
“morning” or “good.” The words at issue are not disclaimed
in any of these registrations.
Arguments & Analysis
With respect to the mark MORNING GOODS, it is opposer’s
position that such mark merely conveys that the identified
goods are products that are for consumption by consumers
during the earliest part of the day. Opposer argues that,
Opposition No. 91110121
11
as evidenced by the NEXIS excerpts, the term is already in
use in the food industry to describe this category of
products.
Applicant, on the other hand, argues that the mark
MORNING GOODS has no established meaning and that it is not
merely descriptive of the identified goods.
As previously noted, in determining whether a mark is
merely descriptive, we must consider the significance that
the term would have to the average purchaser of the goods.
In re Bright-Crest, Ltd. supra. See also In re Nett
Designs, Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“The
perception of the relevant purchasing public sets the
standard for determining descriptiveness”]. In this case,
there are no restrictions as to the purchasers of
applicant’s goods. In other words, applicant has not
restricted its goods to persons in the food industry such as
wholesalers and distributors. In the absence of any
restrictions, we must assume that applicant’s goods will be
purchased by all the normal purchasers of these types of
goods which would include ordinary consumers. Indeed, it is
ordinary consumers who are the relevant purchasing public or
“average purchasers” of these types of goods. Because
ordinary consumers will not have been exposed to the use of
the term “morning goods” in food industry publications, the
NEXIS excerpts submitted by opposer are of little probative
Opposition No. 91110121
12
value in determining the issue of mere descriptiveness. We
note also that the twenty NEXIS excerpts are spread out over
a period of ten years, and seven of the excerpts were taken
from the same publication, albeit different issues. This
hardly evidences widespread use of the term “morning goods”
even in the food industry. Moreover, the testimony of
opposer’s witnesses that the term is used in the food
industry to describe a category of products is entitled to
little weight because there is no evidence that ordinary
consumers have been exposed to such use.
Further, notwithstanding the admittedly descriptive
nature of the word “goods,” we are not persuaded that the
combined mark MORNING GOODS is merely descriptive when
applied to applicant’s goods. No information about any
quality or characteristic of the goods is conveyed with a
degree of particularity. Some, albeit minimal, thought or
perception would be required on the part of prospective
purchasers in order to perceive the significance of the mark
MORNING GOODS as it relates to applicant’s goods.
Turning then to the mark MORNING GOODNESS, opposer
argues that this mark merely conveys that applicant’s goods
are of good quality and may be consumed during the earliest
part of the day.
Opposition No. 91110121
13
Applicant, on the other hand, again argues that the
mark MORNING GOODNESS has no established meaning and that it
is not merely descriptive of the identified goods.
It is well settled that terms which are laudatory are
also regarded as being merely descriptive because these
laudatory terms are viewed as a form of describing the
quality of the goods. See J. Thomas McCarthy, Vol. 2,
Trademarks and Unfair Competition, Section 11:17 (4th ed.
1998), and cases cited therein.
We find that the mark MORNING GOODNESS, when applied to
applicant’s goods, is suggestive and not merely descriptive.
There is a certain ambiguity about the mark, and again no
information about any quality or characteristic of the goods
is conveyed with a degree of particularity. To some
purchasers the mark may suggest that applicant’s goods will
add “goodness” to their morning; to others it may suggest
that applicant’s goods are of a desirable quality. That
quality, however, is not defined. Compare In re Dos Padres
Inc., 49 USPQ2d 1860 (TTAB 1998) [The mark QUESO QUESADILLA
SUPREME is merely descriptive of applicant’s goods because
it immediately conveys to purchasers that applicant’s cheese
is of high quality].
Decision: The opposition is dismissed as to each of
the involved applications.