Precedential No. 7: "BARBARA'S" Bests "BARB'S BUNS BAKERY, INC." in TTAB 2(d) Bake-Off
In its 7th precedential decision of 2007, the Board sustained an opposition to registration of the mark BARB'S BUNS BAKERY, INC. for printed recipes sold as a component of food packaging, recipe books, and newsletters ["BUNS BAKERY, INC." disclaimed]. The Board found the mark likely to cause confusion with the marks BARBARA'S and BARBARA'S BAKERY previously used and/or registered for bakery goods, newsletters, printed recipes, and recipes sold as a component of food packaging. The Board also sustained Opposer's claim that Applicant Barbara Landesman was not using her mark on any of the identified goods as of the filing date of the subject application. Barbara's Bakery, Inc. v. Landesman, 82 USPQ2d 1283 (TTAB 2007).
Likelihood of confusion: Kneading its way through the du Pont factors, the Board observed that Applicant's goods are legally identical to Opposer's printed goods, and therefore the second factor, the similarity of the goods, weighed in favor of Opposer. Likewise, the third factor, the similarity in trade channels, favored Opposer.
As to the fifth factor, Opposer's evidence that its products are sold in 20,000 stores, including "almost every single natural food stores in the country," its sales of more than $2 billion over the past ten years, advertising expenditures of $1 million per year, and its ranking as "one of the largest brands across all health food categories," convinced the Board that BARBARA'S and BARBARA'S BAKERY "have achieved a degree of renown, at least in the natural foods marketplace." Thus "opposer's mark [sic] is a strong mark."
Finally, turning to the first du Pont factor, the Board found that the dominant feature in Applicant's mark is BARB'S, and the dominant feature in Opposer's mark(s) is BARBARA'S. Although Applicant claimed that "Barb's Buns" was a playful reference to her posterior, the Board was not attracted by that notion: "any double entendre significance of BARB'S BUNS is outweighed by the plain meaning of the words in the mark." In sum, the Board found that the similarities in the marks outweighed the differences.
Weighing the du Pont factors, the Board found confusion likely.
Non-use: The Board noted that, in a Section 1(a) application registration is allowed only as to the goods upon which the mark was in use as of the application filing date. [Opposer did not plead a fraud claim]. Applicant's discovery responses confirmed that she had not used her mark on "printed recipes sold as a component of food packaging," that as to "recipe books" in Class 16, her delivery of a "virtual cookbook" via e-mail did not qualify as use, and that any use on newsletters was discontinued more than six years prior to the filing date. Therefore the Board sustained the opposition on the ground of non-use.
Unclean hands defense: The Board considered the unpleaded affirmative defense of unclean hands, allegedly arising out of Opposer's use of the ® symbol adjacent the mark shown below, when in fact that mark was not registered.
The Board accepted Opposer's explanation for the error as "plausible and credible." According to Opposer, its ownership of the mark BARBARA's in the special form shown near the top of this posting led it to believe that it could use the symbol adjacent the word BARBARA'S whenever it appeared. Opposer's officer averred that she was not aware that the PTO had required Opposer to remove the symbol from an application drawing for the registered mark, and she asserted that affirmative steps were being taken to eliminate misuse of the symbol. The Board therefore ruled that Applicant had failed to proved that the misuse "was undertaken with fraudulent intent or that it constitutes unclean hands."
Text Copyright John L. Welch 2007.