Thursday, February 22, 2007

Precedential No. 12: Kellogg Fails to Rebut 2(f) Claim in "CINNAMON TOAST CRUNCH" Opposition

On remand from the U.S. District Court for the Eastern District of Michigan, the Board dismissed Kellogg's opposition to registration of the mark CINNAMON TOAST CRUNCH for a "cereal derived ready-to-eat food bar." Kellogg failed to rebut General Mills' prima facie case of acquired distinctiveness based on transfer of the acquired distinctiveness of the identical mark for breakfast cereal. Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766 (TTAB 2007) (on remand) [precedential].

The Board originally dismissed this opposition in 2004 due to Kellogg's failure to establish standing. (TTAB decision here). The federal district court, however, concluded that standing had been established, and so it remanded the case to the TTAB.

The subject application, based on intent-to-use, included a claim of acquired distinctiveness under Section 2(f) as to the phrase CINNAMON TOAST. The 2(f) claim was based on General Mills' ownership of two incontestable registrations for CINNAMON TOAST CRUNCH for breakfast serial, on 16 years of use of the mark with cereal, and on the advertising and sales figures for its cereal.

Kellogg maintained that the mark is merely descriptive in light of its and the industry's "long established prior use of the words 'cinnamon,' 'toast,' 'cinnamon toast,' 'crunch,' or 'crunchy.'" It contended that Applicant's 2(f) claim was inadequate as a matter of law because Applicant did not present evidence that cereal and food bars are related, and because Applicant's existing registrations disclaim the term CINNAMON TOAST.

General Mills argued that the relationship between cereal and cereal-based food bars is "self evident," that the disclaimers made ten years ago are no longer relevant, and that it established acquired distinctiveness for CINNAMON TOAST based on its sales and advertising figures.

The Board observed that a party opposing a 2(f) application bears "the initial burden of challenging or rebutting the applicant's evidence of distinctiveness made of record during prosecution which led to publication of the proposed mark." Yamaha Int'l Corp. v. Hoshina Gakki Co., 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).

The Board agreed with General Mills that the relationship between cereal and cereal bars is "self evident" and that no extrinsic evidence is required to prove same. Opposer's mere argument to the contrary was not sufficient to meet its initial burden.

As to the disclaimers, the Board found that "the substantial length of use and registration of the marks for breakfast cereal, and the substantial sales and advertising over the past five years alone ... are sufficient, in the absence of countervailing evidence, to establish that applicant's mark as a whole, including the disclaimed phrase CINNAMON TOAST, has acquired distinctiveness in connection with breakfast cereal."

Moreover, the Board found that this acquired distinctiveness is transferred to the cereal-based food bars of the subject application.

Thus Kellogg's arguments failed to satisfy its initial burden of challenging or rebutting General Mills' 2(f) showing made during prosecution and accepted by the Examining Attorney, and therefore the opposition was dismissed.

TTABlog note: Another example of the transfer of acquired distinctiveness to an I-T-U application is found in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). [the court found a "close relationship" between "retail outlet services and retail store services in the field of mattresses," on the one hand, and "telephone shop-at-home retail services in the field of mattresses," on the other].

Text Copyright John L. Welch 2007.


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