Despite Identity of Marks, TTAB Dismisses 2(d) Opposition for Lack of Proof That Pet Food and Organic/Natural Food Products Are Related

The Board dismissed this Section 2(d) opposition to registration of the mark NATURE'S PROMISE for "food for caged birds, pet food for small mammals, hay." Opposer Ahold claimed likely confusion with the identical mark, registered for natural and organic food and for a grocery store department featuring natural and organic foods. The Board found no evidence that consumers would expect that Applicant's pet food and Opposer's goods and services are related. Ahold Licensing SA v. Premium Nutritional Products, Inc., Opposition No. 91180170 (November 22, 2011) [not precedential].


In an initial procedural skirmish, Applicant objected in its brief to a discovery deposition submitted by Ahold because it was not submitted via notice of reliance. Applicant claimed that it did not know why the brief was filed. The Board agreed that the deposition transcript should have been filed through a notice of reliance; but this involved a procedural objection that Applicant should have made promptly so that the defect could be cured. Because it was not raised promptly, the objection was waived.

Fame? Ahold proved substantial sales of its NATURE'S PROMISE brand products (some 550 different products in all, sold in Ahold's own stores, including GIANT and STOP & SHOP). A brand awareness study indicated that a "very significant portion of opposer's customer base are users of Nature's Promise or purchasers of Nature's Promise." Another study showed that 71% of Ahold's customers were aware of the NATURE'S PROMISE brand. But the Board observed that a survey of Ahold's own grocery store customers is not sufficient to establish fame, and there was no evidence regarding market share or renown among all customers for organic and natural foods. Nor was there any evidence of the marks renown in any media, or of advertising expenditures.

The marks: Identical.

The channels of trade and classes of customers: Identical in part. Applicant's goods are sold through, inter alia, grocery stores and mass merchandisers. Opposer's goods are presumed to travel in all normal trade channels for those goods, and those channels would include grocery stores and mass merchandisers. Furthermore, the people who buy groceries also buy pet food.

The goods and services: There was no testimony or evidence regarding the similarity or dissimilarity of the goods and services. Although the involved goods (as identified) are sold in grocery stores, they are not competitive or complementary products.

Ahold contended that human and pet foods can and do emanate from the same source, and it pointed to the Recot v. Becton case, where the CAFC found pertinent that "several large companies produce and sell both human and pet food." The Board, however, pointed out that, unlike in Recot, here the evidence does not support Ahold's position. There was no evidence that any other company produces and sells human and pet food. "In fact, opposer is the only company identified in this record that produces and sells human and pet food and, in that regard, opposer's pet food has a different trademark (i.e., COMPANION)."

Moreover, the Board noted, the modern supermarket sells many products from many producers and industries. There is no reason to assume that the involved goods "would share a common source merely because they are sold under the same roof."

Furthermore, in Recot, the court found FRITO-LAY to be a famous mark and it ruled that the TTAB had erred in giving limited weight to that fame. The CAFC reasoned that the fame of a mark may affect the likelihood that consumers would be confused when purchasing products that are not closely related.

Likewise, Ahold failed to provide evidence that pet food is related to a grocery store department featuring natural and organic foods.

Conditions of purchase: There was no evidence that consumers would exercise heightened care when purchasing the involved products.

Lack of actual confusion: Applicant's pet food products actually move in different channels of trade than those of Ahold [which goods are sold only in Ahold's own stores, in segmented NATURE'S PROMISE sections], and so there has not been a significant opportunity for confusion to occur. Therefore, the absence of confusion merited little weight.

Balancing the factors: Because Ahold failed to meet its burden to prove that customers "would mistakenly believe that pet food and organic or natural food emanate from the same source because of the similarity of the marks," the Board dismissed the opposition.

TTABlog comment: Compare this decision with the ENSURE decision blogged on Monday, involving human and pet nutritional supplements.

Text Copyright John L. Welch 2011.