Manna Pro Corp.v.O. H. Kruse Grain & Milling Co., PM Ag Products Inc., and Hillman Holdings, Inc.

Trademark Trial and Appeal Board

Sep 12, 2001

No. 92024636 (T.T.A.B. Sep. 12, 2001)

9/12/01
Paper No. 47
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Manna Pro Corporation
v.
O.H. Kruse Grain & Milling Company, and PM Ag Products
Incorporated, and Hillman Holdings, Inc., joined as party
defendants1
_____

Cancellation No. 24,636
_____

Lisa A. Fahien and Andrew B. Mayfield of Armstrong
Teasdale LLP for petitioner.

Robert W. Sacoff and Beth A. Fulkerson of Pattishall,
McAuliffe, Newbury, Hilliard & Geraldson for respondent.
_____

Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On December 18, 1995 Manna Pro Corporation filed a
petition to cancel Registration No. 1,628,895 on the
Principal Register for the mark MANAMILK for “dietary

1 By Board order dated September 4, 1996, PM Ag Products
Incorporated was joined as a party defendant in this case. The
records of the Assignment Branch of this Office now indicate
that PM Ag Products Incorporated has assigned Registration No.
1,628,895 (involved herein) to Hillman Holdings, Inc. See Reel
2194, Frame 0942. Accordingly, the latter entity is hereby
joined as a party defendant.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 24636
2
feed supplements for animals” in International Class 5,
and “animal feed” in International Class 31.2
As grounds for cancellation petitioner alleges that
it adopted and/or used the mark MANNA for animal feed
before respondent adopted and/or used the mark MANAMILK
for dietary feed supplements for animals and animal feed;
that petitioner is the owner of the following
registrations:
Registration No. 1,120,141 for MANNA MATE for
foodstuffs for animals, namely calf and lamb
feed;3

Registration No. 302,619 for the mark shown below

2 Registration No. 1,628,895, issued December 25, 1990. The
claimed date of first use for each class is June 20, 1989. The
registration includes a claim of ownership of Registration No.
1,113,747. (This claimed registration issued February 20, 1979,
and is for the mark MANAMAR for “feeds and feed supplements for
animals” in International Class 31, with a claimed date of first
use of 1956.)
A Section 9 renewal application and a Section 8 affidavit were
due in the involved Registration No. 1,628,895 by no later than
June 25, 2001 pursuant to Sections 8(a)(3) and 9(a) of the
Trademark Act. There is no indication in the records of the
Post Registration Branch of this Office that the renewal and the
affidavit of use were filed. The registration has not yet been
officially held expired under Section 9 of the Trademark Act.
Because the trial was completed and briefs were filed before
June 25, 2001 (i.e., this cancellation proceeding was at a very
late stage when the registration putatively expired), the Board
will determine this case on the merits. Cf. Trademark Rule
2.134(b) regarding a show cause order to respondent. See also
TBMP §602.02(b).
3 Registration No. 1,120,141, issued June 12, 1979, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
The claimed date of first use is August 31, 1973. Petitioner
owns this registration through assignment.
Cancellation No. 24636
3

for mixed calf food;4

Registration No. 588,509 for MANNA for feed for
all farm animals and fowls, namely, feed for stock
cattle, dairy cattle, horses, pigs, sheep, goats,
rabbits, mink, fox, chinchillas, chickens and
turkeys, comprised of grains, concentrates and
minerals;5

Registration No. 1,406,988 for MANNA PRO for dairy
feed;6

Registration No. 1,691,827 for the mark shown
below

for animal feed;7

Registration No. 1,694,713 for CALF-MANNA for
animal feed;8

Registration No. 1,712,042 for MANNA ELITE for
horse feed;9

4 Registration No. 302,619, issued April 25, 1933, republished
under Section 12(c), Section 8 affidavit accepted, Section 15
affidavit acknowledged, third renewal. The term “calf” is
disclaimed. The claimed date of first use is August 11, 1932.
Petitioner owns this registration through assignment.
5 Registration No. 588,509, issued April 20, 1954, Section 8
affidavit accepted, Section 15 affidavit acknowledged, second
renewal. The claimed date of first use is August 31, 1950.
Petitioner owns this registration through assignment.
6 Registration No. 1,406,988, issued August 26, 1986, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is June 17, 1985. Petitioner owns
this registration through assignment.
7 Registration No. 1,691,827, issued June 9, 1992, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is 1981.
8 Registration No. 1,694,713, issued June 16, 1992, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is 1932.
9 Registration No. 1,712,042, issued September 1, 1992, Section
8 affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is 1989.
Cancellation No. 24636
4

Registration No. 1,783,816 for MANNA E for
concentrated microbial supplements for animal
feeds;10

10 Registration No. 1,783,816, issued July 27, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
letter “e” is disclaimed. The claimed date of first use is
August 1992.
Cancellation No. 24636
5
Registration No. 1,796,736 for SOW-MANNA for swine
food supplements;11 and

Registration No. 2,000,257 for MANNA SENIOR for
animal feed;12

that petitioner adopted and/or used all of its registered
marks before respondent adopted and/or used the mark
MANAMILK; that petitioner adopted and/or used the mark
MANNA MATE for animal feed before respondent adopted/used
the mark MANAMILK for its goods; that petitioner adopted
and/or used the mark MANNA PRO as a house mark for a
variety of animal and pet foods and food supplements
before respondent adopted and/or used the mark MANAMILK
for its goods; that petitioner adopted and/or used the
mark CALF MANNA before respondent adopted and/or used its
mark MANAMILK for its goods; that respondent’s mark,
MANAMILK, so resembles petitioner’s previously used and
registered marks, MANNA, MANNA MATE, MANNA PRO and CALF-
MANNA, as to be likely, when used in connection with
respondent’s “pet vitamins” [sic -- dietary feed
supplements for animals and animal feed], to cause
confusion, mistake or deception under Section 2(d) of the

11 Registration No. 1,796,736, issued October 5, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is October 1, 1991.
12 In the original pleading, this was pleaded as application
Serial No. 74/529,545. Registration No. 2,000,257, issued
therefrom on September 10, 1996. The claimed date of first use
is January 1993.
Cancellation No. 24636
6
Trademark Act; and that respondent’s registration raises
doubts regarding petitioner’s ownership of and right to
use
Cancellation No. 24636
7
the marks MANNA MATE, CALF-MANNA (and design), MANNA PRO,
CALF-MANNA, MANNA ELITE, MANNA E, SOW-MANNA, MANNA and
MANNA SENIOR.13
Respondent, in its answer, denied the salient
allegations of the petition to cancel, and raised the
affirmative defenses of laches and acquiescence.14
Preliminarily, we decide respondent’s motion (filed
August 11, 1997) to strike certain matters (items I, V,
and VI) from petitioner’s notice of reliance. Item VI
refers to the testimony deposition of William Harrington,
which is admissible without a notice of reliance. See
Trademark Rule 2.125. A copy of the deposition
transcript (with exhibits) was filed in June 2000 and,
thus, it is properly of record.
Item V refers to documents produced by respondent
during discovery. While these would not generally be
admissible through a notice of reliance [see Trademark
Rule 2.120(j)(3)(ii)], in this case they were identified

13 While this pleading is not a particularly artful or clear
pleading of a “family” of marks, the question of petitioner’s
“family” of marks was tried, and was briefed by both petitioner
and respondent. To whatever extent it may be necessary, the
pleadings are considered amended to conform to the evidence on
the issue of a “family” of marks. See Fed. R. Civ. P. 15(b).
14 There was absolutely no discussion of the issues of laches
and acquiescence in respondent’s brief on the case, and these
defenses are therefore considered waived.
Cancellation No. 24636
8
and introduced as exhibits at the Harrington deposition.15
Thus, these documents are properly of record as Exhibit
Nos. 12 - 20 of the William Harrington deposition.
Item I in petitioner’s notice of reliance is a
listing of petitioner’s twelve registrations (ten
registrations were pleaded by petitioner), and includes a
reference to reliance on the USPTO file wrappers thereof.
Respondent objected to petitioner’s reference to the file
histories. Inasmuch as petitioner filed only status and
title copies of its registrations, the entire file
histories thereof are not in the record.
Respondent also correctly objected on the basis that
current status and title copies of the registrations were
not attached to the notice of reliance. However,
petitioner subsequently filed then-current status and
title copies of the twelve registrations, along with
petitioner’s motion to supplement its notice of reliance
for the purpose of submitting the current status and
title copies. Petitioner’s motion to supplement is
granted and, thus, the twelve status and title copies of
petitioner’s registrations are of record herein, subject

15 The parties’ counsel stipulated to the authenticity and
genuineness of Exhibit Nos. 12 – 20 at the Harrington deposition
(see page 5).
Cancellation No. 24636
9
to respondent’s further objection to two of the
registrations, discussed below.
Respondent specifically objected to two of the
twelve registrations, Registration No. 1,056,232 for the
mark MILK MATE and Registration No. 2,080,190 for the
mark DUCK MANNA, because they were not pleaded by
petitioner. While petitioner’s pleaded registrations are
properly before us, these two registrations, which were
neither originally pleaded nor the subject of an amended
pleading, subject respondent to undue surprise and
prejudice. Thus, respondent’s objection is well taken
and petitioner’s Registration Nos. 1,056,232 and
2,080,190 have not been further considered in our
decision herein. See Hard Rock Cafe Licensing Corp. V.
Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998).
Respondent’s motion to strike is granted as to
petitioner’s two non-pleaded registrations (Nos.
1,056,232 and 2,080,190), and the motion to strike is
otherwise denied.
During the deposition of William Harrington,
respondent objected to his testimony regarding the
unpleaded mark MILK MATE (Registration No. 1,056,232), as
well as Exhibit No. 11, which is a feed tag or label for
petitioner’s MILK MATE product; and respondent renewed
Cancellation No. 24636
10
the objection in its brief on the case. Again, because
petitioner neither pleaded nor amended its pleading to
include this mark, MILK MATE, respondent’s objection is
sustained. Accordingly, that portion of William
Harrington’s testimony regarding the mark MILK MATE, as
well as Exhibit No. 11 related thereto, have not been
considered insofar as petitioner was attempting to add a
non-pleaded mark into the issue of likelihood of
confusion. However, Exhibit No. 11 (the feed tag) will
be considered for the very limited purpose relating to
petitioner’s claim of a family of marks.
The record consists of the pleadings; the file of
the involved registration; the testimony, with exhibits,
of William Harrington, petitioner’s “vice president,
director of the national and international businesses”
(limited as explained above); the testimony, with
exhibits, of Jerry Wilson, “plant manager, nutritionist”
at O.H. Kruse Grain & Milling Company; petitioner’s
notice of reliance on status and title copies of its
twelve registrations (limited to ten registrations as
explained above), the file history of respondent’s
registration, respondent’s answers to certain
interrogatories, respondent’s answers to certain requests
for admission, and certain documents produced by
Cancellation No. 24636
11
respondent (and introduced as exhibits at the William
Harrington deposition); and respondent’s notice of
reliance on status and title copies of its involved
Registration No. 1,628,895 for the mark MANAMILK, and its
previous Registration No. 1,113,747 for the mark MANAMAR,
and petitioner’s answers and objections to respondent’s
first set of interrogatories.16
Both parties filed briefs on the case.17 An oral
hearing was not requested.
Petitioner, Manna Pro Corporation, manufactures and
distributes animal feed for a wide variety of animals,
including dairy cattle, swine, goats, horses, rabbits,
dogs, cats, emus and ostriches. Petitioner and its
predecessor have continuously used the mark CALF-MANNA
(and design) on mixed calf food since 1932. Mr.
Harrington explained that Manna Pro Corporation has more
brand identity with CALF-MANNA and it uses that mark to

16 Respondent also submitted with this notice of reliance a copy
of its requests for production of documents and a copy of
petitioner’s responses and objections thereto. Responses to
documents requests are not properly made of record by way of a
notice of reliance. See TBMP §711, and cases cited therein.
However, because petitioner’s responses consist virtually only
of objections, we have considered these objections as being of
record herein.
17 Petitioner’s consented motion (filed July 5, 2001) for leave
to file petitioner’s reply brief, effective November 13, 2000,
is granted.
Cancellation No. 24636
12
launch other products identified by MANNA marks (e.g.,
MANNA ELITE, MANNA SENIOR). (Dep., p. 40.)
Petitioner and its predecessors have used the mark
CALF-MANNA on animal feed since 1932; the marks MANNA and
MANNA MATE since at least as early as 1979; and the mark
MANNA PRO since 1985. Petitioner has used the mark MANNA
ELITE since 1989; the mark SOW-MANNA since 1991; the mark
MANNA E since 1992; and the mark MANNA SENIOR since 1993.
Petitioner’s products are sold nationwide to
livestock owners and breeders, dairy farmers, and a broad
spectrum of the livestock industry. It promotes its
goods sold under the Manna Pro Corporation marks through
feeder meetings, and brochures and advertisements done in
conjunction with
petitioner’s distributors and dealers. The goods are
sold through feed dealers, farm store chains, feed
distributors, large retail chain stores, and sometimes
directly to end product users.
Respondent manufactures animal feed for all types of
animals, including dairy cattle, poultry, horses, zoo
animals, and canaries. Respondent is involved in the
wholesale and retail sales of animal feed. In fact, O.H.
Kruse Grain & Milling Company (Kruse) has continuously
been a distributor for Manna Pro Corporation since around
Cancellation No. 24636
13
1988 (and was a distributor for petitioner’s
predecessor). Kruse sells petitioner’s CALF-MANNA
product at its stores, and has sometimes sold
petitioner’s milk replacer product as well as some of
petitioner’s pet foods and horse feed.
The product sold under respondent’s MANAMILK mark is
“a milk-based supplement for young animals” (Wilson Dep.,
p. 29.) Respondent does not manufacture this product,
rather it is custom manufactured for respondent. The
involved mark MANAMILK has been used by respondent since
1989. Although respondent’s other products are
distributed in Hawaii, central and southern California,
parts of Arizona, Idaho and Nevada (Wilson Dep., p. 24),
Mr. Wilson was unaware of any sales of the MANAMILK
product outside of California, with the exception of one
out-of-state invoice which he saw when respondent applied
to register the mark. (Wilson, Dep., pp. 67 and 77.)
Respondent’s main customers are commercial feeders
such as dairies, poultry farms and horse farms; but it
also sells to pet shops, feed stores, and to jobbers who
distribute the products. Respondent advertises and
promotes its products, including its MANAMILK supplement,
through the sales staff in the field,
literature/brochures, and at fairs.
Cancellation No. 24636
14
In a cancellation proceeding, even if the petitioner
owns a registration, priority must be proven. A
petitioner, relying on registration(s) of its pleaded
mark(s), is entitled to rely on the filing date(s) of the
application(s) which matured into the registration(s) as
evidence of use of its mark(s). See Henry Siegel Co. v.
M & R International Mfg. Co., 4 USPQ2d 1154, footnote 9
(TTAB 1987). The testimony establishes petitioner’s
priority of use (through predecessors) of its registered
marks CALF-MANNA since 1932 (with the filing date of the
application which matured into Registration No. 302,619
being November 3, 1932); MANNA since 1979 (with the
filing date of the application which matured into
Registration No. 588,509 being September 25, 1950); MANNA
MATE since 1979 (with the filing date of the application
which matured into Registration No. 1,120,141 being July
12, 1978); and MANNA PRO since 1985 (with the filing date
of the application which matured into Registration No.
1,406,988 being January 22, 1986). All of the above-
named marks were used by petitioner prior to respondent’s
first use in June 1989 (the filing date of its underlying
application being September 11, 1989). Thus, petitioner
has established priority.
Cancellation No. 24636
15
We turn then to the issue of likelihood of
confusion. Our determination of this issue is based on
our analysis of all the probative facts in evidence that
are relevant to the factors bearing on likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to the marks, the Board must consider
the similarity or dissimilarity of the marks in sound,
appearance, connotation and commercial impression. See 3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §§23:20 and 23:20.1 (4th ed. 2001).
We initially address petitioner’s claim of a family
of “MANNA” marks. In its brief (p. 12), petitioner
contends that its “registrations establish that Manna Pro
owned a family of “MANNA” marks, both before and after
the filing of the MANAMILK application.”18 Aside from the
ten registrations, petitioner’s evidence of a “family” of
“MANNA” marks essentially consists of (i) a small folded
paper box which is to be used as a feed scoop enclosed
within bags of animal feed, and on which the marks MANNA
PRO and CALF-MANNA appear in large, colorful lettering,
and the

18 Petitioner had submitted status and title copies of twelve
registrations of various “MANNA” marks, two of which have been
excluded from consideration.
Cancellation No. 24636
16
mark MANNA MATE appears in small, plain type within the
text (paragraph 5) of the calf feeding directions listed
on the side panel of the box; and (ii) a feed tag used on
petitioner’s MILK MATE product (Exhibit No. 11--which has
otherwise been excluded from consideration), on which the
marks MANNA PRO and CALF-MANNA appear in large, black
lettering, and the mark MANNA MATE appears in smaller
type on the reverse side of the feed tag. These two
exhibits both show use of the words “The Calf-Manna
Company,” the marks MANNA PRO, MANNA MATE, and CALF-
MANNA, as well as petitioner’s corporate name, Manna Pro
Corporation.
It is well settled that mere adoption, use and
registration of a number of marks having a common feature
(e.g., MANNA) for similar or related goods or services
does not in and of itself establish a family of marks.
Rather, in order to establish a family of marks, it must
be demonstrated that the marks asserted to comprise the
“family,” or a number of them, have been used and
advertised in promotional material or used in everyday
sales activities in such a manner as to create common
exposure and thereafter recognition of common ownership
based upon a feature common
Cancellation No. 24636
17
to each mark. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Witco
Chemical Co. v. Whitfield Chemical Co., 418 F.2d 403, 164
USPQ 43 (CCPA 1969); and Hester Industries Inc. v. Tyson
Foods Inc., 2 USPQ2d 1646 (TTAB 1987).
In this case, petitioner’s argument that the
registrations alone establish a “family” of marks is
legally incorrect. Moreover, this record contains no
clear evidence that either the feed tag (Exhibit No. 11)
or the folded paper box scoop (Exhibit 21) were
distributed and used prior to respondent’s first use date
in June 1989 to show that petitioner was promoting a
family of marks. In addition, the folded paper box scoop
is enclosed within the package of animal feed, and is not
seen by purchasers until after they purchase and then
open the bag. Finally, the mark MANNA MATE is hidden
within the text of the feeding directions, and is not
likely to be noticed by consumers. All of these factors
do not leave an impression of a family of marks. Viewing
the totality of petitioner’s evidence regarding its
asserted “family” of “MANNA” marks, the record before the
Board is not sufficient to prove that petitioner has used
and promoted its marks in a manner resulting in public
Cancellation No. 24636
18
recognition of MANNA as a family “surname” such that the
various MANNA marks would be assumed to have a common
origin.
We turn next to a consideration of petitioner’s
individual “MANNA” marks. The petition to cancel
specifically references that petitioner adopted, used,
applied to register or registered the marks MANNA MATE,
MANNA, MANNA PRO, CALF-MANNA, MANNA ELITE, MANNA E, SOW-
MANNA, and MANNA SENIOR, prior to respondent’s adoption
of its mark MANAMILK. However, in its brief, petitioner
frames the issue before the Board as whether there is a
likelihood of confusion between respondent’s mark and
petitioner’s “registered marks CALF-MANNA (and Design),
MANNA, MANNA PRO, MANNA MATE, and MILK MATE, all of which
were registered prior to the first use and filing date of
Respondents’ MANAMILK mark, and [petitioner’s] common law
mark CALF-MANNA, which [petitioner] and its predecessors
have used since 1932.” (Brief, p. 4.) Moreover, the
record establishes petitioner’s priority only as to the
marks MANNA MATE, MANNA, MANNA PRO and CALF-MANNA (and
design). Thus, we consider the issue of likelihood of
confusion with regard to petitioner’s individual marks,
CALF-MANNA (and design), MANNA, MANNA PRO, MANNA MATE,
and CALF-MANNA.
Cancellation No. 24636
19
Of these marks, we consider petitioner’s MANNA mark
to be the closest of petitioner’s marks to respondent’s
MANAMILK mark. Therefore, we will focus our discussion
of the similarity or dissimilarities between the marks on
petitioner’s MANNA mark.
It is obvious that there are some differences,
namely, that respondent’s mark includes the word “MILK”;
that respondent’s mark is three syllables while
petitioner’s is two syllables; and that there are two
“N”s in petitioner’s mark but only one “N” in
respondent’s mark. These differences, however, do not
serve to distinguish the marks. Purchasers are unlikely
to remember the specific differences due to the
recollection of the average purchaser, who retains a
general, rather than a specific, impression of the many
trademarks encountered. That is, the purchaser’s
fallibility of memory over a period of time must be kept
in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Moreover, it is generally the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and be remembered by the purchaser. See Presto
Cancellation No. 24636
20
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). In this case, respondent’s mark is
MANAMILK, the first two syllables of which sound like
petitioner’s mark, MANNA. Also, because respondent’s
mark is for a milk-based product, MANA is the dominant
part of the mark. These realities play a major part in
creating the similarity of the overall commercial
impression of these marks.
There is no evidence of record as to any specific
meaning or connotation of the “MANA” portion of
respondent’s mark.19 Respondent, arguing that the
MANNA/MANA portions of the respective marks differ in
connotation, requested that the Board take judicial
notice of the meaning of “MANNA.” That request is
granted, and we note that The American Heritage
Dictionary (1976) defines “manna” as “n. 1. The food
miraculously provided for the Israelites in the
wilderness during their flight from Egypt. Exodus 16:14-
36. 2. Any spiritual nourishment of divine origin....”
Although MANNA has a definition, and there is not a
specific connotation of the letters “MANA,” we are not

19 Respondent’s witness (Jerry Wilson) did explain why its
previous mark MANAMAR was chosen, which related to the fact that
respondent once distributed Manamar company’s product, and when
the Manamar company went out of business respondent began to
produce the MANAMAR product. (Wilson, Dep., p. 49.)
Cancellation No. 24636
21
convinced that purchasers will even notice the difference
of one “N” in the marks; rather, they are likely to
remember respondent’s mark as the familiar spelling
“manna.” Thus, the “mana” portion of respondent’s mark
would have the same connotation as plaintiff’s mark. The
additional word “MILK” in respondent’s mark, with its
highly descriptive connotation for a milk-based
supplement, does little to distinguish respondent’s mark
from petitioner’s MANNA mark.
Accordingly, we find petitioner’s MANNA mark and
respondent’s MANAMILK mark, when considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression.
Respondent’s reliance on the case of Ex parte Albers
Milling Company, 99 USPQ 419 (Comm. 1953) is not
persuasive.
In that case, petitioner’s predecessor sought a reversal
of the examiner’s refusal to register the mark MANNA in
view of the registered mark . The Commissioner
determined that for purposes of determining likelihood of
confusion, the registered mark, consisting of an
arbitrary association of letters and a design, could not
be dissected, but must be considered as a whole, and the
examiner was reversed. (This application matured into
Cancellation No. 24636
22
the present petitioner’s Registration No. 588,509 for the
mark MANNA.) In the case now before us the third
syllable of respondent’s mark will be recognized as the
common English word, “milk,” rather than an arbitrary
association of letters and a design.
Turning next to a consideration of the similarities
and dissimilarities of the parties’ goods, there is no
doubt that petitioner’s animal feed and respondent’s
animal feed and dietary supplements for animals are
identical or closely related. Respondent’s goods are
identified as “dietary feed supplements for animals” and
“animal feed,” while petitioner’s goods sold under the
MANNA mark are identified as “feed for all farm animals
and fowls, namely, feed for stock cattle, dairy cattle,
horses, pigs, sheep, goats, rabbits, mink, fox,
chinchillas, chickens and turkeys, comprised of grains,
concentrates and minerals.”
Respondent’s arguments that only petitioner’s CALF-
MANNA product competes with respondent’s MANAMILK
product; and that petitioner’s “[other products] are used
in different stages in the animals’ lives” (brief, p. 11)
are unpersuasive. It has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Cancellation No. 24636
23
Board is constrained to compare the goods (or services)
as identified in the application with the goods (or
services) as identified in the registration(s). See
Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, National Association
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987).
The record is clear that both parties’ goods are
sold through some of the same or overlapping channels of
trade to the same purchasers. Respondent acknowledges
that the trade channels are similar (differing only in
that petitioner sells to large retail chain stores,
whereas respondent does not). (Brief, p. 12.) In fact,
respondent is a distributor for petitioner’s goods, and
offers for sale both its own products and some of
petitioner’s involved goods.
Petitioner argues that its marks are “well-known and
strong” (brief, p. 12). However, the record simply does
not support that argument. Thus, this du Pont factor
does not weigh in petitioner’s favor.
Respondent argues that confusion is not likely as
evidenced by the fact there has been no actual confusion
despite concurrent use for eight years, especially in
Cancellation No. 24636
24
light of the similar trade channels. We are not
persuaded by respondent’s argument. Proof of actual
confusion is not necessary. Rather, the test is
likelihood of confusion. See Kangol Ltd. V. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed.
Cir. 1992). Moreover, evidence of actual confusion is
difficult to obtain. In this case, the record shows that
respondent’s sales of its MANAMILK product have been
limited to California, and there is no indication of the
volume of sales. In these circumstances, we cannot
conclude that the lack of evidence of actual confusion
shows that confusion is not likely to occur.
We find that, based upon a consideration of all
relevant du Pont factors, confusion as to source is
likely between respondent’s MANAMILK mark and
petitioner’s previously used and registered MANNA mark,
when these marks are used in connection with the
essentially identical goods offered by these parties.
Having found that there exists a likelihood of
confusion resulting from the contemporaneous use of
respondents’ marks MANAMILK on animal feed and dietary
feed supplements for animals and petitioner’s mark MANNA
on feed for all farm animals and fowls, we elect not to
consider the remainder of petitioner’s Section 2(d) claim
Cancellation No. 24636
25
as to its other individual marks for which petitioner
established priority, specifically, CALF-MANNA (and
design), MANNA PRO and MANNA MATE, or petitioner’s claim
of prior common law rights in the mark CALF-MANNA. See
American Paging Inc. v. American Mobilphone Inc., 13
USPQ2d 2036, 2039 (TTAB 1989), aff’d 17 USPQ2d 1726 (Fed.
Cir. 1990)(unpublished); and Goldring, Inc. v.
Towncliffe, Inc., 234 F.2d 265, 110 USPQ 284, 285 (CCPA
1956).
Decision: The petition to cancel is granted and
Registration No. 1,628,895 will be cancelled in due
course. (If the records of this Office officially
indicate the registration has expired under Section 9 of
the Trademark Act, then the Director will not issue a
separate cancellation order.)