H.J. Heinz Company and Promark Brands (collectively “Opposers”) commenced opposition proceedings against GFA Brands (the “Applicant”) attempting to block registration of the mark SMART BALANCE based on their registrations for the mark SMART ONES. The Opposers use their mark to brand frozen entrees, frozen desserts and other frozen foods, while the Applicant identified frozen entrees, desserts, and frozen snack foods in their applications for SMART BALANCE. See ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Opposition Nos. 91194974 and 91196358 (March 27, 2015) [precedent]. Applicant did not counterclaim for cancellation of the Opposers’ registrations, therefore priority was not in issue. The primary issue centered on likelihood of confusion. The Board’s analysis focused on the similarities between the marks, the relatedness of the goods and the trade channels, the degree of care made in purchasing decisions, and the fame of Opposers’ mark.
The general rule for comparing the parties’ marks is that the trademarks must be considered in their entireties focusing on the appearance, sound, connotation and commercial impression. Then, it is appropriate to inquire if one element is dominant in creating the commercial impression. It is reasonable to give more or less weight to a particular element of the mark. See our firm site page entitled, Similarities In Trademarks.
In this case, the marks share the term “smart” which is a laudatory term and considered to be descriptive. Descriptive marks are weak by nature and will not be given the same scope of protection as an inherently distinctive mark. To support the position that the term “smart” is descriptive and weak, Applicant introduced into evidence third-party registrations and third party uses of the term “smart” in the food industry. Often the word “smart” is used in marketing food products to mean low calorie, low in fat, heart healthy, nutrient rich, high in fiber, etc.
The Board viewed the third party registrations as competent evidence to show that the term “smart” has an accepted meaning in the food industry. The multiple third party registrations using the term “smart” demonstrate that the marks can co-exist because the other terms in the marks are sufficient to distinguish the marks from one another. Therefore, in this case less weight was attributed to the term “smart” and more weight was given to the other terms in the marks.
SMART ONES and SMART BALANCE possess different visual appearances, phonetic impressions, and commercial impressions. The parties’ marketing emphasis varied as well and this created dissimilar connotations for each mark. For example, the Opposers through deposition testimony stated that they are marketing to a consumer looking for a healthier lifestyle while the Applicant’s representative testified that SMART BALANCE implies a balance between a great taste and good health. The Board held that the parties’ marks were sufficiently dissimilar to find against a conclusion of likelihood of confusion.
Regarding the relatedness of the goods, the parties’ goods as reflected in the identifications in the application and registration are closely related and legally identical in some instances. In addition, the products have been sold through the same grocery store chains, similar mass merchants such as Wal-Mart and Target, and also the same club stores. Thus, the trade channels and relatedness of the goods favor a finding of likelihood of confusion. See our firm site page entitled, The Importance Of The Relatedness Of The Goods Or Services. In connection with purchasing care, the goods are sold at a cost between $2.00 – $4.00 and sold to the relative public at large. Therefore, the Board concluded that there would be a moderate to low level of care in purchasing the goods, possibly weighing in favor of a likelihood of confusion.
Opposers attempted to prove their mark SMART ONES fell under the legal protection of a famous trademark. Opposers did not succeed due to the fact that the advertising and sales data was based on SMART ONES goods and WEIGHT WATCHERS products. The law is well settled in this area and it states that when two marks are advertised together, the data does not prove that one product possesses the requisite degree of consumer recognition. Although the record for SMART ONES did demonstrate commercial strength it fell short of the legal standard for “fame” for likelihood of confusion and for a dilution cause of action.
In the end, the Board weighed all the factors and emphasized that the marks were different in appearance, sound, meaning and commercial impression and that they had co-existed for a long 17 years in the U.S. marketplace. The Board concluded on balance, that the Opposers failed to prove likelihood of confusion. Weighing the du Pont factors and taking into account the totality of the probative evidence is a difficult task in a trademark likelihood of confusion analysis, if you need assistance with a likelihood of confusion evaluation please contact our office for a courtesy consultation.