Shurfine Foods, Inc.v.The Shur-Good Biscuit Co., Inc.

Trademark Trial and Appeal Board

Feb 15, 2001

No. 91101169 (T.T.A.B. Feb. 15, 2001)

Hearing: Paper No. 51
October 10, 2000 PTH
2/15/01
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Shurfine Foods, Inc.
v.
The Shur-Good Biscuit Co., Inc.
_____
Opposition No. 101,169
to application Serial No. 74/599,288
filed on November 15, 1994
_____
Joseph S. Makuch of Marger Johnson & McCollom, P.C. for
Shurfine Foods, Inc.
Gail L. Morrissey of Standley & Gilcrest for The Shur-Good
Biscuit Co., Inc.
______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Shur-Good Biscuit Co., Inc. has filed an
application to register the mark SHUR-GOOD BRAND and design,
as shown below, for “salted and unsalted snack foods, namely
pretzels and corn-based snacks.”1
1 Application Serial No. 74/599,288, filed November 15, 1994,
alleging dates of first use of October 31, 1988. Applicant
claims the benefits of Section 2(f) of the Trademark Act.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 101,169
2
Registration has been opposed by Shurfine Foods, Inc.
under Section 2(d) of the Trademark Act. As grounds for
opposition, opposer asserts that continuously since 1972, it
has used the mark SHURFINE on pretzels and corn-based
snacks; that opposer owns a number of registrations of marks
consisting of the term “SHUR,” and that applicant’s mark
SHUR-GOOD BRAND and design, when used on the identified
goods, so resembles opposer’s SHUR family of marks,
including especially the mark SHURFINE, as to be likely to
cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application, trial testimony, with related exhibits,
taken by opposer; status and title copies of opposer’s
pleaded registrations, introduced into evidence by opposer’s
notice of reliance; and trial testimony, with related
exhibits, taken by applicant. Both parties filed briefs on
the case and an oral hearing was held before the Board.
According to the testimony of its witnesses, opposer is
a corporation which is organized primarily to own, register,
license, maintain, and police the marks SHURFINE, SHURFRESH,
SHUR VALUE and SHUR SAVING. These marks are known as
“private labels” and are used in connection with over 6,000
Opposition No. 101,169
3
food and non-food products sold through thousands of
independent grocery stores and convenience stores in the
United States. The marks are also used as service marks for
retail store identification and other retail grocery
services in central and northeastern Pennsylvania.
The retail stores that sell products under opposer’s
marks are members of independent wholesale grocery buying
cooperatives. Each cooperative wholesaler is owned by its
member retailers and operates regional warehouses through
which goods bearing opposer’s marks are shipped.
The independent wholesalers, in turn, are generally
members of one of three procurement and marketing
organizations, namely, Shurfine Eastern Corporation,
Shurfine International, Inc., and Western Family Foods, Inc.
Each of these organizations owns one-third of opposer,
Shurfine Foods, Inc. These procurement and marketing
organizations contract with vendors throughout the United
States to supply thousands of food and nonfood products
under opposer’s SHUR marks to retail grocery stores and
convenience stores. These products cover every major
category of goods sold through grocery stores, including
bakery, deli, produce, meats, dairy, frozen foods, packaged
foods, health and beauty care and general merchandise.
Shurfine International and Western Family advertise
opposer’s SHUR marks at the institutional level through
Opposition No. 101,169
4
trade journals in an effort to recruit new wholesalers and
retailers. They also provide financial support and
promotional and advertising materials to wholesalers and
retailers to help them sell goods under the SHUR marks.
Goods bearing the SHUR marks are advertised in weekly
circulars, by point of purchase displays in grocery stores
and convenience stores, and by way of television and radio
commercials.
Opposer’s sales of snack foods, however, amount to
several million dollars annually with advertising and
promotion expenditures amounting to several hundred thousand
dollars.2
According to the testimony of Robert Schmitt, a co-
president of applicant, applicant is a family operated
company which began business in 1928. Applicant is a
distributor of many different brand name cookies, crackers,
snacks and specialty products and also distributes its own
products under the mark SHUR-GOOD.3 Applicant has a direct
delivery system with sales persons calling directly on
2 Opposer’s specific sales and advertising figures were deemed
confidential information and introduced into the record pursuant
to a stipulated protective order.
3 We note that applicant’s witness, in his testimony, refers to
applicant’s mark as simply SHUR-GOOD without the term “BRAND.”
Similarly, applicant, in its brief on the case, refers to the
mark as simply SHUR-GOOD. It is clear that the mark sought to be
registered SHUR-GOOD BRAND and design and the mark referred to as
simply SHUR-GOOD are one and the same.
Opposition No. 101,169
5
grocery stores and delivering products directly to those
grocery stores. Applicant has used the SHUR-GOOD mark with
crackers and cookies since the inception of the business and
with pretzels since 1935. Sometime after 1986 applicant
commenced use of the SHUR-GOOD mark in connection with corn-
based snacks.
However, we note that there is no issue with respect to
priority, the Board having entered summary judgment in
opposer’s favor on this issue in an order mailed August 18,
1997. In this regard, opposer submitted status and title
copies of three of its pleaded registrations for its SHUR
marks.
We turn then to the issue of likelihood of confusion
and those duPont factors which are relevant in this case.4
At the outset, we note that opposer pleaded ownership of a
number of registrations of SHUR marks for a variety of food
and non-food products. We will focus our attention on the
following two most pertinent of opposer’s registrations:
Registration No. 1,134,376 (Issued May 6, 1980 under
the provisions of Section 2(f); renewed) for, in
4 In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 101,169
6
pertinent part, pretzels; and
Registration No. 1,152,586 (Issued February 24, 1981
under the provisions of Section 2(f); Sections 8 & 15
affidavit filed) for, in pertinent part, pretzels,
pretzel thins, and pretzel sticks.
Insofar as the goods are concerned, applicant does not
dispute that the goods on which the parties’ marks are used
are identical in part (pretzels). Rather, applicant argues
that the respective goods move in different channels of
trade. In particular, applicant argues that independent
stores purchase their goods from warehouses operated by
shareholder-licensees of opposer whereas applicant
distributes its own goods to grocery stores and
supermarkets. First, is well settled that the issue of
likelihood of confusion in a proceeding such as this must be
determined on the basis of the identification of goods or
services set forth in the plaintiff’s registrations vis-a-
vis the identification of goods or services set forth in the
defendant’s involved application, regardless of what the
evidence may show as to the specific nature of the parties’
respective goods or services. Because there are no
Opposition No. 101,169
7
limitations as to the channels of trade or classes of
purchasers in the identification of goods in opposer’s
registrations and applicant’s application, we must presume,
for purposes herein, that opposer’s and applicant’s goods
are sold in all of the usual trade channels for pretzels, to
all of the normal classes of purchasers for such goods.
Accordingly, we can draw no legal distinctions between the
parties’ trade channels and classes of customers, but rather
must consider them to be the same. In point of fact, both
parties’ pretzels are sold to the same ultimate purchasers,
namely, ordinary consumers.
With respect to the marks, when considered in their
entireties, we find that applicant’s mark SHUR-GOOD BRAND
and design is substantially similar to each of opposer’s
marks, SHURFINE and design and SHURFRESH and design. In
each of the marks, the term “SHUR” is obviously a fanciful
version of the word “sure.” Moreover, the words “fine” and
“good,” as evidenced by the dictionary definitions made of
record by opposer, both connote superior quality. Also, the
word “good” connotes that which is not spoiled or ruined, or
in other words, that which is fresh.5
Although applicant maintains that opposer’s marks are
weak and thus entitled to a narrow scope of protection, the
5 The American Heritage Dictionary of The English Language
defines “fine” as, inter alia, “of superior quality”; and “good”
Opposition No. 101,169
8
evidence of record indicates that opposer’s use and
promotion of these marks has been long and extensive in and
around Nebraska and certain parts of Pennsylvania, with the
result that opposer’s marks have acquired considerable
goodwill and strength in these areas. Moreover, the record
is devoid of any third-party uses of the same or similar
marks for goods of the type involved here.
We recognize that there are specific differences
between the marks which cause differences in appearance and
pronunciation. In particular, the differing terms FINE,
FRESH, and GOOD; the design elements; and the addition of
BRAND in applicant’s mark. However, consumers are not
likely to regard these differences as indicating that the
products come from different sources. Rather, when these
marks are applied to identical goods, consumers are likely
to believe that the products emanate from the same source,
and that the marks are merely variants, used by a single
source to differentiate its various product lines. This is
especially true because both opposer and applicant use the
fanciful spelling SHUR.
Another factor which weighs in favor of a likelihood of
confusion in this case is the fact that pretzels are
relatively inexpensive items that are purchased by ordinary
consumers without a great deal of care.
as, inter alia, “superior to average” and “not spoiled or
Opposition No. 101,169
9
Two additional matters raised by applicant require
comment. First, the absence of actual confusion evidence is
not troubling. Such evidence is difficult to obtain and, in
any event, the test is likelihood of confusion. Further,
the opportunity for instances of actual confusion to arise
has been minimal inasmuch as there is no evidence in this
record that the parties’ goods are sold in the same market
areas.
Second, we recognize that a registration for SHURFINE
and design for cookies and crackers was allowed in 1980 to
opposer, well after applicant’s registration in 1955 of
SHUR-GOOD BRAND and design for the identical goods. It is
well settled, however, that each case must be decided on its
own set of facts and the Board is not bound by
determinations made by Examining Attorneys.
Having determined that there is a likelihood of
confusion when comparing opposer’s individual marks and
applicant’s mark, we need not reach the issue of whether
confusion is likely between applicant’s mark and opposer’s
alleged family of SHUR marks. We should point out, however,
that there are questions in this case as to first, whether
opposer’s evidence is sufficient to establish a family of
SHUR marks prior to the filing date of applicant’s
application, and second, whether applicant’s use of its mark
ruined.”
Opposition No. 101,169
10
for different goods, i.e., cookies and crackers, in a
different geographical area, would defeat opposer’s family
of marks claim.
In sum, we conclude that consumers familiar with
opposer’s pretzels sold under the marks SHURFINE and design
and SHURFRESH and design would be likely to believe, upon
encountering applicant’s mark SHUR-GOOD BRAND and design for
identical goods, that the respective goods originated with
or were somehow associated with the same entity.
Decision: The opposition is sustained and registration
to applicant is refused.