New York Trademark Attorney Blog
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.