Precedential No. 9: SMART BALANCE Not Confusable with SMART ONES for Frozen Food, Says TTAB

In a 44-page opinion, the Board gave the cold shoulder to this consolidated opposition to registration of the mark SMART BALANCE for frozen entrees and for various snack foods and desserts, finding the mark not likely to cause confusion with the registered mark SMART ONES for various types of frozen foods, including entrees, desserts, ready-to-eat wraps, pizzas, and breakfast foods. The Board concluded that although the goods of the parties, as identified in their respective identifications of goods, are closely related and, in some cases, legally identical, the marks are significantly different, particularly in view of the weakness of the formative "SMART," the seventeen-year period of conflict-free coexistence of the parties' marks (but not for frozen foods), and applicant's corroborating survey evidence and expert testimony. ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) [precedential].

Objection to Applicant's Survey Evidence and Expert Testimony: A large portion of the Board's opinion focuses on the expert testimony and survey evidence offered by the parties. Opposers unsuccessfully urged that applicant's survey evidence and expert testimony be stricken because they allegedly comprised improper rebuttal evidence that went beyond attacking applicant's survey. The Board, however, found the evidence and testimony to be proper rebuttal, even though the evidence and testimony did not use applicant's survey as a "template" and did not refer to opposer's survey. FRCP 26(a)(2)(D)(ii) refers to a rebuttal expert as one who presents evidence intended to "contradict or rebut" the other party's evidence. Opposers expert did contradict the conclusions of applicant's expert. Moreover, use of its survey evidence and expert testimony by applicant is not limited to rebutting Opposers' survey, but may counter any of Opposers' evidence, whatever its form.

Fame: Opposers failed in their attempt to prove the mark SMART ONES to be famous for Section 2(d) purposes. The evidence showed large dollar sales, but SMART ONES always appeared in conjunction with the WEIGHT WATCHERS trademark. The Board was consequently unable to attribute the sales or promotional expenditures to the SMART ONES mark alone. See, e.g., In re Bongrain Int'l (Am. Corp.), 894 F.2d 1316, 3 USPQ2d 1727, 1739 (Fed. Cir. 1990). Two brand surveys were similarly inconclusive as to the strength of the SMART ONES mark by itself. Opposers' survey evidence, which purported to show 82% aided awareness of the brand, lacked significant evidentiary value, the Board noting that it has discouraged the use of aided awareness questions. See, e.g., Carefirst of Maryland, 77 USPQ2d at 1507.

In sum, the evidence fell well short of the clear proof required to establish fame under Section 2(d). This failure to prove Section 2(d) fame led the Board to dismiss Opposers' dilution-by-blurring claim, where the burden of proof for proving fame is even higher.

Likelihood of Confusion Surveys: The Board considered the parties' survey evidence "with the following best practices mind."

1. the universe was properly defined and chosen;
2. the survey questions were properly formulated and presented;
3. the interviews were conducted in a manner to minimize error and bias;
4. the data were properly coded, collected, and later analyzed; and
5. the survey reports are complete and appropriately detailed

Opposers' likelihood of confusion survey purported to show a 32% likelihood among the 250 respondents surveyed. The Board, however, found the survey to be fatally flawed. The preliminary screening question that it employed eliminated potential purchasers of SMART BALANCE products who were unaware of SMART ONES products. The Board noted that this "skewed the results of [the] survey by preventing those individuals least likely to be confused from participating." In addition, the pivotal question was close-ended and failed to ask "why?"

"If you were to see a brand of frozen meals in the frozen food section of a supermarket named Smart Balance, would you think it was associated with, licensed by, owned by or in any way connected to Smart Ones? You may answer yes, no, or don’t know."

The Board observed that when a closed-ended question is used, it is essential that a "robust control group" be employed. It found applicant's question to be leading "because it spotlights only two stimuli, i.e., the "SMART ONES" and "SMART BALANCE" trademarks, and provides no other options." As a result, the Board found applicant's survey results to be "dubious in a litigation setting."

Applicant's survey, on the other hand, comported with best practices: the survey universe was properly defined, the questions followed the generally-accepted Ever-Ready format, posing non-leading, open-ended questions and asking appropriate follow up questions, and the survey employed acceptable controls. The survey reported a 2% likelihood of confusion among relevant purchasers, based on 410 respondents. The Board found that applicant's survey supported a conclusion that confusion is not likely.

Smartly balancing the relevant du Pont factors, the Board found that Opposers had failed to carry their burden to prove likelihood of confusion by a preponderance of the evidence.

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TTABlog note: Survey evidence is not often proffered in a TTAB case, and typically the parties' surveys will more or less cancel each other out. After the B&B/Hargis decision, will more survey evidence be offered, since the TTAB's decision will seemingly carry more weight?

Text Copyright John L. Welch 2015.