Monday, March 14, 2011

TTAB Dismisses HOT POCKETS 2(d) Opposition Due to Weakness of POCKETS Formative

The Board dismissed this Section 2(d) opposition to registration of PF POCKET FOODS CORPORATION & Design for pocket sandwiches [POCKET FOODS CORPORATION disclaimed], finding it not likely to cause confusion with with the marks HOT POCKETS and LEAN POCKETS for frozen stuffed sandwiches. The Board observed that "the one point of similarity, at a minimum, is highly suggestive of the goods such that the marks are not confusingly similar." Nestle Prepared Foods Company v.V&V Enterprises Incorporated, Opposition No. 91167465 (March 10, 2011) [not precedential].

Applicant filed its brief five days late, mistakenly relying on the five-extra-days-mail-service rule (2.119(c)), which does not apply when the due date is set by Board order. Nonetheless, the Board accepted the brief, finding no bad faith and no evidence of prejudice to Nestle from the delay.

Nestle attempted to rely on three third-party registrations for marks containing the word POCKETS, but those registrations were owned by its parent and so Nestle could not benefit from the Section 7(b) presumptions attaching to those registrations. So Nestle had to rely on its common law usage of HOT POCKETS and LEAN POCKETS.

Applicant argued that HOT POCKETS is merely descriptive, but the results of a brand awareness survey (96%) convinced the Board that the mark had acquired distinctiveness before Applicant's filing date.

As to the goods, the Board found them to be overlapping, and it therefore presumed that they travel in the same channels of trade to the same class of consumers. The goods are relatively inexpensive and "are subject to a lower level of purchaser care."

The Board then turned to the "main question" in the case: "whether opposer's mark HOT POCKETS is sufficiently similar to applicant's mark such that when used on nearly identical goods, there is likely confusion."

Central to the analysis in this case is the impact of the common term "pocket" to a potential consumer and whether use of that word is enough to create a likelihood of confusion.

The Board found that HOT POCKETS has "strong commercial strength," but the evidence fell short of proving the mark famous for purposes of the Section 2(d) analysis. There was no evidence of long term use of the mark, and Nestle did not separate its sales figures by brand: HOT POCKETS, LEAN POCKETS, or CROISSANT POCKETS.

Moreover, the record showed that "pocket" is "at a minimum, highly suggestive" when used in connection with stuffed sandwiches or snacks. Applicant submitted a number of third-party registrations that include "pocket" or "pockets" in the mark, with the term disclaimed or the registration residing on the Supplemental Register, as well as registrations with the terms used in the identification of goods.

In view of the weakness of the common term POCKET in connection with frozen stuffed sandwiches, the substantial dissimilarities in sound, appearance, connotation and overall commercial impressions of the marks outweigh the differences. [sic!]

And so the Board dismissed the opposition.

Text Copyright John L. Welch 2011.


At 7:25 PM, Anonymous Anonymous said...

Surely this TTAB decision is gonna hurt somebody's pocket....

At 10:27 AM, Anonymous John B. Farmer said...

I wonder if the plaintiff could have avoided the holding company registration problem by making both the holding company and the subsidiary mark user plaintiffs?


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