Odom’s Tennessee Pride Sausage, Inc.v.FF Acquisition, LLC

Trademark Trial and Appeal Board

Apr 17, 2009

No. 91182173 (T.T.A.B. Apr. 17, 2009)

1

Lykos Mailed: April 17, 2009

Opposition No. 91182173

Odom's Tennessee Pride
Sausage, Inc.

v.

FF Acquisition, L.L.C.

Before Rogers, Holtzman and Mermelstein, Administrative
Trademark Judges.

By the Board:

On July 31, 2003, applicant applied to register the
mark displayed below

for “retail grocery store services” in International Class
35.1 Opposer has opposed registration on the grounds that
applicant's mark so resembles opposer's previously used and

1 Application Serial No. 77148503, alleging March 28, 2007 as the
date of first use anywhere and in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
2
registered marks that it is likely to cause confusion,
mistake, or deceive prospective consumers within the meaning
of Section 2(d) of the Lanham Act. In its notice of
opposition, opposer pleaded ownership of several federally
registered marks, including the following:2

2 Registration No. 885136, registered on January 27, 1970, for
“sausage, [ ham, bacon, ] souse [, and lard ]” in International
Class 29, alleging April 3, 1957, as the date of first use
anywhere and June 1968 as the date of first use in commerce,
Section 9 renewal granted.

Registration No. 1859824, registered on October 25, 1994, for
“sausage in roll, link and patty form; souse; barbequed pork;
barbequed beef; head cheese; and prepared breakfast entrees
consisting primarily of eggs, sausage, and cheese” in
International Class 29, and “gravy; prepared breakfast entrees
consisting primarily of biscuit sandwiches; and prepared
breakfast entrees consisting primarily of biscuits and gravy” in
International Class 30, alleging December 15, 1993, as the date
of first use anywhere and in commerce.

Registration No. 3019156, registered on November 29, 2005, for
“fresh sausage rolls, links and patties; fresh souse; fully
cooked sausage links and patties; sausage ball appetizers” in
International Class 29 and “frozen breakfast sandwiches; frozen
appetizers, namely, sausage hot dog sandwiches, wraps and swirls;
and gravy” in International Class 30, alleging 1943 as the date
of first use anywhere and in commerce.

3
Opposer also pleaded ownership of these marks:3

Applicant, in its answer to the notice of opposition, denied
the salient allegations and asserted the affirmative
defenses of laches, estoppel and acquiescence.

3 Registration No. 3200875, registered on January 23, 2007, for
“fresh sausage rolls, links and patties; fully cooked sausage
links and patties; appetizers consisting primarily of meat,
namely, sausage balls, hot dog sandwiches, wraps and swirls” in
International Class 29 and “frozen breakfast sandwiches; gravy”
in International Class 30, alleging March 2003 as the date of
first use anywhere and in commerce.

Registration No. 3200845, registered on January 23, 2007, for
“fresh sausage rolls, links and patties; fully cooked sausage
links and patties; appetizers consisting primarily of meat,
namely, sausage balls, hot dog sandwiches, wraps and swirls” in
International Class 29 and “frozen breakfast sandwiches” in
International Class 30, alleging March 2003 as the date of first
use anywhere and in commerce.

Registration No. 2850472, registered on June 8, 2004, for
“breakfast sandwiches, namely sausage and biscuit sandwiches” in
International Class 30, alleging November 1, 2002 as the date of
first use anywhere and in commerce, and Registration No. 3019210,
registered on November 29, 2005 for “frozen breakfast sandwiches”
in International Class 30, alleging May 2002 as the date of first
use anywhere and in commerce.

4
This case now comes before the Board for consideration
of applicant's motion for summary judgment on (1) opposer’s
claim of likelihood of confusion, and (2) applicant’s
equitable affirmative defense of laches pursuant to
Morehouse Mfg. Corp. v. Strickland & Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969) (“Morehouse defense”). The parties
have fully briefed the motion.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issues of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The evidence
must be viewed in a light favorable to the non-movant, and
all justifiable inferences are to be drawn in the non-
movant's favor. See Lloyd's Food Products Inc. v. Eli's
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
For the reasons set forth below, we find that applicant
has satisfied its burden of establishing the absence of any
genuine issues of material fact with regard to the
dissimilarity of opposer’s marks and applicant’s mark, and
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that applicant is therefore is entitled to judgment as a
matter of law dismissing the likelihood of confusion claim
under Section 2(d).
Based upon the factual circumstances presented in this
case, we find Kellogg Co. v. Pack’em Enterprises, Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991) (“Kellogg”), to be controlling. In
Kellogg, the Court of Appeals for the Federal Circuit
affirmed the Board’s determination that even considering all
other relevant duPont factors in opposer’s favor, the single
duPont factor of the dissimilarity of the marks at issue in
that case outweighed the other relevant duPont factors, and
was therefore dispositive on the issue of likelihood of
confusion.
Similarly here, even considering all other relevant
duPont factors in opposer’s favor, we find that applicant’s
applied-for mark is so dissimilar to opposer’s pleaded marks
that no likelihood of confusion can exist as a matter of
law. See also Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)
(“one du Pont factor may be dispositive in a likelihood of
confusion analysis, especially when that single factor is
the dissimilarity of the marks”).
While both parties’ design marks consist of smiling
boys wearing hats (and in some instances both waiving one
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hand), this is where the similarities end. Opposer’s marks
depict a barefoot child holding a fishing pole. The boy is
wearing a tall pilgrim hat with a ribbon directly above the
brim. The boy’s feet are small and narrow. By contrast,
applicant’s mark depicts a boy facing forward wearing a
short, wide brimmed cowboy hat. This boy is wearing thick
boots, has thick hands, and has a piece of straw in his
mouth. The boy depicted in opposer’s marks has nothing in
his mouth. These visual distinctions are sufficient to
create different commercial impressions of the marks,
thereby precluding a finding of likelihood of confusion.
In view of our determination on likelihood of
confusion, we need not reach the issue of whether summary
judgment based on the Morehouse defense is appropriate in
this case. Accordingly, applicant’s motion for summary
judgment is granted, and the opposition is dismissed with
prejudice.
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NEWS FROM THE TTAB:
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm