Precision Foods, Inc.v.Major Products Co., Inc.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 91109500 (T.T.A.B. Sep. 20, 2001)

9/20/01

Hearing: June 7, 2001 Paper No. 25
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Precision Foods, Inc.
v.
Major Products Co., Inc.
_____

Opposition No. 109,500
to application Serial No. 75/252,641
filed on March 6, 1997
_____

Thomas P. Arden of McBride Baker & Coles for Precision Foods,
Inc.

James C. Simmons of The Law Office of James C. Simmons for
Major Products Co., Inc.
______

Before Walters, Bottorff and Holtzman, Administrative
Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Major Products Co., Inc.
to register the mark MAKE IT THICK for a "food thickeners."1
Registration has been opposed by Precision Foods, Inc. As
its ground for opposition, opposer asserts that applicant's

1 Application Serial No. 75/252,641, filed March 6, 1997, alleging a
bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 109,500
2
mark when applied to applicant's goods so resembles opposer’s
previously used and registered mark THICK-IT for "food
thickener" as to be likely to cause confusion under Section
2(d) of the Trademark Act.
Applicant, in its answer, has denied the salient
allegations in the opposition.
The record includes the pleadings; the file of the
involved application; and opposer's notice of reliance on
evidence including a status and title copy of its pleaded
registration, opposer's unanswered admission requests
including an admission that the goods are competitive, and
applicant's responses to interrogatories and document
requests. Opposer also submitted the testimony (with
exhibits) of opposer's vice-president Ronald M. Kirshbaum.2
Applicant did not take any testimony or introduce any other
evidence.
Both parties filed briefs and an oral hearing was held on
June 7, 2001.
Opposer, Precision Foods, Inc., manufactures a "health
care" food thickener under the mark THICK-IT which is designed
for people who have a swallowing impairment called dysphagia.
(Kirshbaum dep. p. 10). Opposer estimates that there are
somewhere between ten and fifteen million people in the United

2 Applicant did not attend this deposition.
Opposition No. 109,500
3
States with this condition. The THICK-IT product was first
introduced in the market in 1985 and at that time, it was the
first of its type in any market, that is, an instant food
thickener in powdered form where the consistency of the food
could be easily controlled. Mr. Kirshbaum states that the
product "revolutionized" the health care industry with regard
to dysphagia and received "great acceptance" in the market.
(Dep. pp. 23-24).
Mr. Kirshbaum explains that there are two primary markets
for its food thickener, the food service market and the retail
market. The food service market includes food service
distributors and food service operator accounts. The operator
accounts include hospitals, nursing homes, and convalescent
centers. In this market, the product can be sold to
distributors for subsequent sale to the health care facilities
or directly to the facilities themselves. On the retail side,
the product is sold either to national drug wholesalers who in
turn sell to their branch drug stores, or directly to drug
stores by telephone, or by telephone directly to consumers.
While some drugstores may sell the product off the shelf, that
manner of sale, according to Mr. Kirshbaum, "is not the
predominant situation." (Dep. p. 35). Mr. Kirshbaum states
that it is more likely that the product would be recommended
to the consumer by a pharmacist or health care professional
Opposition No. 109,500
4
and that the pharmacist would then place a special order for
the product from his wholesaler. The product is sold in a
variety of container sizes. When it is sold off the retail
shelf to consumers, it usually appears in an eight-ounce
container costing $6.
During its first couple of months on the market, the
product was promoted with "a lot of word-of-mouth advertising
through [health care professionals] personal letters and trade
letters and trade journals...." (Kirshbaum dep. p. 24).
Opposer has subsequently advertised the THICK-IT product to
both the food service and retail markets by print
advertisements in consumer and trade magazines, and
promotional literature. Opposer has also been promoting the
THICK-IT product at trade shows two to five times a year since
1985 and, for an unspecified period of time, has promoted the
product on the Internet. Opposer has submitted reports of two
university or hospital studies determining the effectiveness
of certain food thickeners including THICK-IT food thickener.
Following two years of exclusivity, competitive products
were introduced in the food service market. Mr. Kirshbaum
estimates that there are now twelve such competitors in that
market and he has identified Sysco, Diamond Crystal, and
Thicken Up, as the main competitive products. According to
Opposition No. 109,500
5
Mr. Kirshbaum, opposer's product has no competitors in the
retail market.
Mr. Kirshbaum testified that sales of THICK-IT food
thickener experienced "triple-digit increases" the first
couple of years on the market followed by "strong double-digit
increases" in subsequent years. (Dep. p. 24). Opposer has
submitted, subject to a protective order, sales figures for
the years 1995 to 1999, advertising figures for 1999, and
proposed expenditures for the year 2000. Mr. Kirshbaum
estimates additional expenditures which are not reflected in
those figures and media expenses for the "five to ten" years
preceding 1999. (Kirshbaum dep. p. 58).
The discovery responses made of record by opposer indicate
that applicant manufactures food products, including food
thickener for dysphagia conditions. Applicant decided in late
1996 or early 1997 to "check on the feasibility of using the
mark" and became aware of opposer's registration in February,
1997. (Rev. ans. int. 3). Applicant then filed its intent-to-
use application for the mark MAKE IT THICK on March 6, 1997
and began using the mark on food thickener on or about May 22,
1998. Applicant has not yet advertised or promoted its food
thickener but applicant intends to sell the product through
food distributors to hospitals and nursing homes. Applicant,
in fact, has already made one sale of its product consisting
Opposition No. 109,500
6
of 12 eight ounce cans totaling $6,490 to a potential customer
of opposer.
As indicated above, opposer has made of record a status
and title copy of its pleaded registration. Thus, there is no
issue with respect to opposer's priority. King Candy co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
We turn then to a consideration of likelihood of
confusion. Our determination under Section 2(d) is based on
an analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of confusion
issue, including the similarity of the marks and the
similarity of the goods. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors
deemed pertinent in this proceeding are discussed below.
The parties' goods are both identified as food thickeners.
In view of the directly competitive nature of the goods, the
channels of trade and classes of purchasers for the respective
goods are deemed to be the same. See In re Smith & Mehaffey,
31 USPQ2d 1531 (TTAB 1994). Indeed applicant has admitted
that the products are competitive (adm. req. ans. 5) and the
evidence shows that the products are in fact identical, that
they are used for the same purpose, and that they are sold in
the same food service market.
Opposition No. 109,500
7
We turn then to the marks. Opposer argues that the marks
are similar in sound, appearance and connotation in that
applicant's mark MAKE IT THICK comprises the same words in
opposer's mark THICK-IT arranged differently. Applicant,
however, maintains that the different arrangement of the
shared words plus the additional word MAKE in its mark results
in significant differences in the sound and appearance of the
marks. Applicant further argues that the marks' shared
elements are "such common words" (brief, p. 12) and that
opposer's mark is suggestive and entitled to only a narrow
scope of protection.
The mere fact that applicant's mark incorporates the
component words of opposer's mark does not necessarily mean
that the two marks are similar. In determining the similarity
or dissimilarity of the marks, we must consider the marks in
their entireties, as to appearance, sound, connotation and
commercial impression. Cunningham v. Laser Golf Corp., 55
USPQ2d 1842 (Fed. Cir. 2000). We find that the marks THICK-
IT and MAKE IT THICK when considered in their entireties, are
not similar in sound, appearance or commercial impression.
The marks are visually different. Opposer's mark consists of
two words either joined or separated by a hyphen with the word
THICK preceding the word IT. Applicant's mark includes the
additional word MAKE and the order of THICK and IT are
Opposition No. 109,500
8
reversed in its three-word mark. The differences in the two
marks are even more pronounced when the words are spoken. The
marks do not have the same cadence or number of words.
Moreover, the term THICK-IT is virtually identical in sound to
the familiar dictionary word "thicket" whereas MAKE IT THICK
would be articulated as three separate words sounding nothing
like "thicket."
The transposition of THICK and IT also changes the
commercial impressions conveyed by the marks. The word THICK
in opposer's mark THICK-IT is used in the uncharacteristic
manner of a verb, resulting in a somewhat unusual overall
expression. The mark MAKE IT THICK, on the other hand, is an
ordinary sentence where the words, including THICK, are used
in their traditional, ordinary sense. In addition, because
THICK-IT is an unfamiliar expression, it may call to mind the
more familiar term "thicket," thereby further distinguishing
the commercial impressions created by the two marks.
The marks have a similar overall meaning, but that meaning
is highly suggestive of food thickener. The term "IT," common
to both marks, is a suggestive reference to the food product
to be thickened. The other shared word "THICK" is highly
descriptive of one of the most important characteristics of
food thickener and there is no doubt that the word is intended
to convey this descriptive meaning in both marks.
Opposition No. 109,500
9
It is settled that highly suggestive marks are weak and
are generally accorded a more limited scope of protection than
an arbitrary mark. See The Drackett Company v. H. Kohnstamm &
Co., Inc., 160 USPQ 407 (CCPA 1969) ["The scope of protection
afforded such highly suggestive marks is necessarily narrow
and confusion is not likely to result from the use of two
marks carrying the same suggestion as to the use of closely
similar goods."]; and Sure-Fit Products Company v. Saltzson
Drapery Company, 117 USPQ 295 (CCPA 1958).
While, as opposer points out, there is no evidence of
other third parties using the words THICK or IT on food
thickeners, a primary competitor of opposer is using a
variation of THICK in its mark, THICKEN UP, further indicating
the relative weakness of opposer's own mark in relation to its
goods.
In view of the weakness of THICK-IT and MAKE IT THICK, we
find that the distinct differences in the marks, particularly
in sound and appearance, are sufficient to distinguish one
mark from another.
Opposer contends, however, that its mark is strong "due to
opposer's dominance in the health care food thickening market
and general market acceptance" of the product. (Brief, p.
11). The evidence shows that THICK-IT has been used on food
thickener for approximately fifteen years and at least steady
Opposition No. 109,500
10
increases in sales volume since the introduction of the
product on the market, nearly doubling in volume over the
period 1995 to 1999. However, there is no information as to,
for example, opposer's relative share of the food service
market or opposer's proportionate number of operator accounts,
and the sales figures themselves, including number of units
sold, do not seem particularly impressive on their face
considering the vast number of people who, according to
opposer, have this disorder. Nevertheless, Mr. Kirshbaum has
testified essentially that THICK-IT food thickener is a
leading brand in the food service market (dep. p. 25) and
applicant admits that the product is successful in the
marketplace.3 (Brief, p. 10). Opposer also points to the
unsolicited use of THICK-IT food thickener in two professional
studies and it appears that, according to Mr. Kirshbaum, such
studies tend to focus on leading brands.4
The evidence demonstrates that opposer's mark has attained
some, but not necessarily a tremendous degree of recognition
in the field. Under the circumstances, and considering the

3 Because opposer has no competitors in the retail industry, it is
understandable that the THICK-IT product would be, as described by
opposer, the leading brand in the retail field. However, there is no
indication as to, for example, what portion of opposer's sales relate
to that market.
4 One other article relied on by opposer mentions opposer's company
and the fact that it offers "various products for people with
dysphagia, including...thickeners...." However, there is no mention
of opposer's mark in this article.
Opposition No. 109,500
11
highly suggestive nature of opposer's mark in connection with
its goods, we remain convinced that opposer's mark is entitled
to a more limited scope of protection. This scope of
protection should not, in any event, extend to applicant's
mark which, in all important respects, is dissimilar to
opposer's mark.
Opposer also argues that "food products sold at retail"
and "less expensive items" are not purchased with great care.
(Brief, p. 16). The primary customers for the parties'
goods, including operators of nursing homes and other health
care facilities, are sophisticated professionals who would
exercise a high degree of care in purchasing these products.
Nevertheless, there is no restriction in the respective
identifications as to purchasers, and it seems that at least
some of opposer's customers are ordinary members of the
public. While food thickener is a relatively low cost
product, it is not an impulse product such as shampoo or a
package of chewing gum. Given the seriousness of the
disorder for which the food thickener is used and the fact
that it would probably be recommended by a doctor or
pharmacist rather than purchased off the shelf, the purchase
of this product by the consumer would involve a more informed
and thoughtful decision.
Opposition No. 109,500
12
Finally, opposer maintains that applicant adopted its MAKE
IT THICK mark in bad faith. In particular, opposer claims
that applicant adopted a mark comprising opposer's mark with
knowledge of opposer's incontestable registration, thereby
raising an inference that applicant intended to trade on
opposer's good will. Opposer claims that the inference is
made stronger because opposer's mark "is the leading brand in
the market." Opposer points to the mixing instructions on
applicant's product label which use the same consistency
designations, i.e., "nectar," honey," and "pudding," as
opposer uses on its own labels.5 Mr. Kirshbaum claims that
opposer "invented" these designations and has long used these
terms to designate the three levels of consistency for its
products. (Dep. p. 72).
Applicant, aside from misconstruing the issue as one of
trade dress violation, admits that it knew of opposer's
registration at the time of filing its application, denies
that

5 Opposer, based on Mr. Kirshbaum's testimony, refers generally in its
brief to applicant's adoption of "verbiage and instructions long used
by opposer" in its packaging. (Brief, p. 14). However, opposer
specifically addresses only applicant's alleged appropriation of the
above consistency designations. In any event, opposer has failed to
establish, and we do not find, that the other alleged similarities in
packaging mentioned by Mr. Kirshbaum such as package size and generic
language including "instant food thickener," "desired consistency,"
and "do not overmix" (which does not even appear on opposer's label
as far as we can determine) are persuasive of wrongful intent. In
fact, the labels are otherwise strikingly different.
Opposition No. 109,500
13
the mark was adopted in bad faith, and maintains further that
regardless of its intent, there is no likelihood of confusion
in this case. Applicant contends that it is entitled to use
those consistency designations arguing that the words are
standard in the industry and are "functional characteristics
which Applicant should now be free to use." (App. brief, p.
7).
The Board in Roger & Gallet S.A. v. Venice Trading Co.
Inc., 1 USPQ2d 1829 (TTAB 1987), stated that intent may, and
ought to, be taken into account when resolving the issue of
likelihood of confusion when that issue is not free from
doubt. If confusion is not likely to result from the use of
the marks, the motive of applicant cannot affect its right to
the registrations sought. Steak N Shake, Inc. v. Steak and
Ale, Inc., 171 USPQ 175 (TTAB 1971).
In this case, we have no doubt concerning the likelihood
of confusion. Even if we did have doubt, the evidence
submitted by opposer would not assist us in resolving this
issue. Establishing bad faith requires a showing that
applicant intentionally sought to trade on opposer's good will
or reputation. See Big Blue Products Inc. v. International
Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991). While
such intent may be inferred from surrounding circumstances
such as the copying of a competitor's product packaging,
Opposition No. 109,500
14
opposer is under the heavy burden to prove by clear and
convincing evidence that applicant is guilty of bad faith.
See, for example, LaBounty Manufacturing Inc. v. United States
International Trade Commission, 958 F.2d 1066, 22 USPQ2d 1025
(Fed. Cir. 1992) and Scripps Clinic & Research Foundation v.
Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1001 (Fed. Cir.
1991).
The evidence relied on by opposer in this case is far from
sufficient to meet that burden.6 In fact, a visual comparison
of both labels makes it hard to believe that this is the part
of opposer's label that applicant would choose to copy if
applicant intended to create confusion or deception.
Moreover, applicant has offered a very plausible "good faith"
explanation for its use of those designations. We note that
this identical wording is used generically in the hospital
study report. The study, appearing on (unnumbered) page 2 of
opposer's exhibit no. 33, is entitled Using A
Multidisciplinary Monitor To Assess Accuracy of Thickened
Liquids For Hospital Patients With Dysphagia. The report

6 The question of intent is heavily dependant on the particular facts
and the facts in this case are distinguishable from those in cases
such Broadway Catering Corp. v. Carla Inc., 215 USPQ 462 (TTAB 1982)
and Roger & Gallet S.A. v. Venice Trading Co., Inc., 1 USPQ2d 1829
(TTAB 1987) on which opposer has relied. In Broadway Catering, for
example, the finding of wrongful intent was not based on an
allegation of similar trade dress copying but rather applicant's
failure to provide any credible explanation for its adoption of a
mark which was identical to opposer's mark of "notoriety and renown."
Opposition No. 109,500
15
describes the protocol for the study as follows (emphasis
added):
Our initial protocol for thickening liquids included the
following: 1) Adhering to recommendations by the speech-
language pathologists regarding thickness level (nectar,
honey, pudding)...

For the foregoing reasons, we conclude that
notwithstanding the identity of the products in this case,
the sophistication and/or care taken by purchasers of
opposer's product together with the dissimilarities in the
marks as well as the relative weakness of opposer's mark and
the narrow scope of protection to which it is entitled makes
confusion unlikely.
Decision: The opposition is dismissed.