Monday, June 27, 2005

TTAB Banishes "EDEN GARDEN" From PTO Paradise In View Of Likely Confusion With "EDEN" For Food Products

The TTAB didn't say Applicant Brenkwitz Farms was a bad apple in attempting to register EDEN GARDEN & Design (shown below) for fresh fruit, but the Board showed no forgiveness in finding a likelihood of confusion with the mark EDEN used and registered by Eden Foods, Inc., in various forms and combinations for a wide variety of vegetable, fruit, and beverage products. Eden Foods, Inc. v. Brenkwitz, Opposition No. 91151474 (June 16, 2005) [not citable].

Lined for the colors red, orange, yellow,
blue, purple, and brown.

The Board plowed its way through the du Pont factors, finding the goods (fresh fruit and processed fruit) related, the channels of trade (supermarkets and the Internet) and customer base identical, and the marks "highly similar in overall commercial impression." It also found Opposer's marks to be strong and well-known and entitled to a broad scope of protection, based upon 35 years of use, recent annual sales of $100 million, $2 million per annum in advertising expenditures, use of the marks on a wide array of food and beverage products, and an aggressive trademark enforcement program.

Applicant Berkwitz managed to dredge up one touching but fruitless argument regarding the marks:

"The possibility that purchasers with imperfect recall are likely to believe Applicant's homespun, busy artwork, viewed in its entirety, as simply another of corporate Opposer's simple word-marks is vanishingly small."

The Board also found that Opposer established a "family of marks," though that finding had no apparent effect on the outcome of the proceeding. The Board pointed out once again that the mere adoption, use, and registration of a group of marks having a common feature is insufficient to establish a family of marks. It must be shown that the marks are "used and promoted together in such a way as to create among purchasers an association of common ownership based upon the family characteristic."

Here, throughout various promotional materials Opposer used the housemark EDEN and the tradename EDEN FOODS "along with EDEN as a product mark and all of the other EDEN-formative marks claimed herein." Sales sheets and catalogues depicted "a sizeable number of EDEN and EDEN-formative marks on a myriad of different food items. Advertisements promote, and the authors of articles use, these various marks together in such a manner as to create among purchasers an association of common ownership based upon EDEN, the family surname."

Consequently the Board found that "opposer indeed possesses a family of EDEN marks.

TTABlog comment:
The TTABlog has previously pointed out the lack of clarity in the TTAB "family of marks" jurisprudence. See "The TTAB's Dysfunctional "Family of Marks Doctrine", posted on January 28, 2005. The EDEN GARDEN decision does little to explain what a mark owner is supposed to do in order to establish a family of marks. As usual, the Board states that mere use and registration of a group of marks is not sufficient. Yet in finding an EDEN family of marks here, the Board fails to specify exactly what Opposer did, other than use and register a group of marks, to "create among purchasers an association of common ownership." Did Opposer employ "look for advertising?" Did it specifically describe its EDEN marks as a "family." Did it depict the marks seated around a dinner table? All that this Board panel provided is the conclusion without sufficient explanation, leaving TTAB practitioners in limbo once again.

Text Copyright John L. Welch 2005. All Rights Reserved.


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