LBJ Pakke, Inc.v.Elenbaas Co., Inc.

Trademark Trial and Appeal Board

Feb 20, 2001

No. 92028843 (T.T.A.B. Feb. 20, 2001)

Paper No. 12
2/20/01
UNIT
Bernard p. Mo
Pakke, Inc.
Michael R. Hu
Company, Inc.
Before Cissel
Judges.
Opinion by Ci
On Decem
on the Princi
shown below.
The services
“distributors
Class 42. Th
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
RFC
ED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
LBJ Pakke, Inc.
v.
Elenbaas Company, Inc.
_____
Cancellation No. 28,843
_____
lldrem, Jr. of Trapani & Molldrem for LBJ
ghes of Hughes & Schacht, P.S. for Elenbaas
_____
, Seeherman and Quinn, Administrative Trademark
ssel, Administrative Trademark Judge:
ber 24, 1996, Registration No. 2,024,864 issued
pal Register to Elenbaas Co., Inc. for the mark
are identified in the registration as
hips in the field of bulk animal feeds,” in
e registration was based on respondent’s claim
Cancellation No. 28,843
2
of use of the mark in commerce since June 30, 1990.
Respondent disclaimed the word “COMPANY” apart from the mark
as shown and indicated that the stippling in the drawing is
for shading purposes only and is not meant to indicate
color.
On April 21, 1999, LBJ Pakke, Inc. filed a Petition to
Cancel this registration. As grounds for cancellation,
petitioner asserted prior use and registration of the
trademarks “DAIRYMAN’S EDGE” for “dairy feed additives,
namely a yeast, bacteria and enzyme supplement,” in Class
51; and “DAIRYMEN’S EDGE” for “livestock feed additives;
namely, a bacteria and electrolyte supplement; and silage
inoculant,” in Class 52; and that the mark in the
registration sought to be canceled, as used in connection
with the goods set forth therein, so resembles petitioner’s
registered trademarks that confusion is likely.
Respondent denied the essential allegations set forth
in the Petition to Cancel.
A trial was conducted in accordance with the Trademark
Rules of Practice. Petitioner introduced evidence by means
of a Notice of Reliance. Included were certified copies of
petitioner’s pleaded registrations and copies of
1 Reg. No. 1,768,401, issued to petitioner on May 4, 1993 based
on a claim of use since April 19, 1990. Combined affadavit under
Sections 8 and 15 accepted and acknowledged.
Cancellation No. 28,843
3
respondent’s responses to petitioner’s interrogatories.
Neither party took testimony, but both filed briefs
presenting their respective positions. An oral hearing
before the Board was not requested.
Respondent has not contested petitioner’s priority of
use. The sole issue before the Board in this proceeding is
therefore whether confusion is likely to occur as a result
of respondent’s use of its mark in connection with its
distributorship services in the field of bulk animal feeds
in light of petitioner’s use of its registered marks in
connection with the dairy feed additives and livestock feed
additives specified in petitioner’s registrations. Based on
careful consideration of the record and arguments before us,
we find that confusion is likely.
Both parties agree that the test for determining
whether confusion is likely is set forth in the case of In
re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). The Court therein listed thirteen factors,
each of which must be considered if evidence relating to it
is of record. As is frequently the case, the factors to be
considered in the instant case are the similarities of the
marks in their entireties as to appearance, sound,
connotation and commercial impression and the commercial
2 Reg. No. 1,852,187, issued to petitioner on September 6, 1994
based on a claim of use since September 1, 1992. Combined
affidavit under Sections 8 and 15 accepted and acknowledged.
Cancellation No. 28,843
4
relationship between the goods set forth in petitioner’s
pleaded registrations and the services identified in
respondent’s registration. In connection with the latter we
must consider the similarity of established, likely-to-
continue trade channels, and the conditions under which and
buyers to whom sales of the goods and services of the
parties are made.
We turn our attention first to the marks at issue here.
Although they are obviously not the same, the test for
likelihood of confusion does not require that the marks be
identical in order for confusion to be likely. In the
instant case, the marks are similar because respondent’s
mark incorporates petitioner’s mark in its entirety as the
slogan or motto in the banner beneath respondent’s name and
the stylized cow design. Although the words “THE DAIRYMAN’S
EDGE” are not the most dominant component of respondent’s
mark, they are nonetheless a significant portion of it.
Retailers of livestock feeds (i.e., the class of purchasers
for respondent’s services) who are familiar with
petitioner’s registered marks “DAIRYMAN’S EDGE” and
“DAIRYMEN’S EDGE” for feed additives are likely to view the
use of “THE DAIRYMAN’S EDGE” in respondent’s mark as an
indication that petitioner sponsors, endorses, or is somehow
affiliated with respondent’s services of distributing animal
feeds.
Cancellation No. 28,843
5
This is especially so in light of the fact that
respondent itself deals in feed supplements, which are very
similar to the feed additive products which petitioner sells
under its registered marks, except that the supplements are
not mixed directly with the feed, but rather are provided to
cows in “discreet bins” in addition to their basic feed.
Respondent’s interrogatory responses show that the products
respondent distributes include a microbial and enzyme
inoculant, a grass mineral, a program corn mineral, a
program dry cow mineral, and a high phosphorus alfalfa
mineral, all of which are for use in conjunction with dairy
feeds. This evidence showing that a business which renders
distributorship services in the field of animal feeds also
sells feed supplements under the same mark it uses in
connection with its services demonstrates the close
relationship of petitioner’s goods to respondent’s services.
The use of these similar marks in connection with these
goods and services is likely to cause confusion. Although
petitioner’s mark has a laudatory, suggestive significance
in connection with petitioner’s products, the slogan portion
of respondent’s mark is identical, and it has the same
laudatory, suggestive significance in connection with
respondent’s services that it has with respect to
petitioner’s goods. Further, respondent emphasizes this
portion of its mark through its references to its “edge” in
Cancellation No. 28,843
6
respondent’s labels and promotional materials. Respondent
plays on the idea of getting the “edge” in the promotion of
its inoculant by directing prospective purchasers to
“Increase Your Advantage with The Silage Edge.” In
addition, “FREE CHOICE MINERAL EDGE PROGRAM” is the heading
under respondent’s mark on the labels for four of the kinds
of feed supplements respondent sells.
Respondent’s arguments that confusion is not likely are
not well taken. The first such argument is that the marks
cannot be found to be similar without resorting to
impermissible dissection. The second is that the services
set forth in respondent’s registration are commercially
distinct from petitioner’s products. Respondent also argues
that confusion is unlikely in view of the sophistication of
its customers.
The rule against dissecting a mark is just part of the
general proposition that in determining whether confusion is
likely, marks must be compared in their entireties for
similarities in the commercial impressions they engender.
As discussed above, respondent has essentially appropriated
petitioner’s mark in its entirety and added to it
respondent’s tradename and a design which is highly
suggestive of its animal feed distribution services, namely,
a picture of a cow. These additional word and design
elements do not distinguish respondent’s mark from
Cancellation No. 28,843
7
petitioner’s mark; instead, because of the nature of these
additional elements, consumers are likely to believe that
the marks are variations of each other, both indicating
source in the same entity.
With regard to the second argument of respondent, it is
well settled that the goods and/or services of the parties
need not be identical. Respondent’s services, for the
reasons discussed above, involve the sale of goods which are
closely related to the goods that are listed in petitioner’s
registrations. The use of these similar marks in connection
with these related goods and services is likely to cause
confusion.
Respondent’s third argument is that confusion is
unlikely because its customers are sophisticated. As noted
by petitioner, however, there is no evidence of record on
this point. In any event, even if a certain level of
purchaser sophistication had been established, this fact
would not have been determinative of a different result in
this case. The fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or that they are immune from source
confusion when similar marks are used in connection with
related goods and/or services. In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
Cancellation No. 28,843
8
To the extent that there may be any doubt on the issue
of likelihood of confusion, we are obligated to resolve any
such doubt in favor of the prior user, in this case,
petitioner. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 1025
(Fed, Cir. 1988).
Decision: The Petition to Cancel is granted.