Thursday, September 22, 2011

Precedential No. 24: Fame of TOTAL Mark Yields Near Total Victory in General Mills 2(d) Opposition to Fage Yogurt Applications

Putting an end to this 11-year old food fight (described by the Board as "acrimonious" and "torturous"), the Board sustained General Mills' opposition to 14 and one-half of Fage's 15 applications to register various design marks that contain the word TOTAL, for yogurt and a few other products. The Board found Fage's marks likely to cause confusion with GM's famous mark TOTAL, registered in standard character form for ready-to-eat breakfast cereal. General Mills, Inc. and General Mills IP Holdings II, LLC v. Fage Dairy Processing Industry S.A., 100 USPQ2d 1584 (TTAB 2011) [precedential]. [The parties ultimately settled this dispute, and the Board dismissed these proceedings as part of the settlement: see this Order].

After plowing through the 583 papers filed in this proceeding, including the trial record of more than 20,000 pages, the Board noted that "[e]xtremely rare is the Board proceeding that generates a record of the size in this case." It pointed out that its jurisdiction is of a "very limited nature:"

The Board is an administrative tribunal of the USPTO empowered to determine the right to registration only. The Board has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. ***

To reiterate our frustrations expressed to the parties at the oral hearing, the issues herein do not warrant a record of this size. This is not the first time the Board has expressed its displeasure about overzealous litigation in our proceedings.

Fame: Turning to the substantive issues, the Board first considered GM’s claim that its mark is famous. GM proved that its sales of, and advertising expenditures for, TOTAL brand cereal (since 1986) were "substantial," its market share "impressive," and its household penetration "very high." The brand is regularly mentioned in the media, and brand awareness is "consistently very high." The Board therefore concluded that, for Section 2(d) purposes, TOTAL is a famous mark for ready-to-eat cereal, even though it is conceptually a suggestive mark, and it is entitled to a broad scope of protection.

The goods: The Board agreed with Fage that there is no per se rule that all breakfast foods are related, but GM established that there is a "close relationship between opposers' ready-to-eat cereal and applicant's yogurt given consumers longstanding mixing of these types of products and the circumstances surrounding their marketing."

The purchasers: The involved goods are common food items sold in the same stores, and so the purchasers and channels of trade overlap. Moreover, Opposers promote cereal in the dairy aisle, and vice versa. The overlap of consumers is particularly strong with regard to health-conscious consumers. [As opposed to health-unconscious? -ed.]

These inexpensive grocery items are generally purchased on impulse, and although some of the consumers of the involved goods may be more careful in their purchases, the Board "must base [its] decision on the least sophisticated potential purchasers." [A scary thought! - ed.]

The marks: The Board divided Fage's marks into two sets. In the first seven marks "the word TOTAL is clearly the most prominent and memorable component of the mark." Consumers will focus on the word TOTAL as the source-identifying component of each mark.

In the second set, comprising eight marks, the word TOTAL is depicted in smaller font in the middle of the marks, and the word FAGE appears in larger typeface and is emphasized. However, even if FAGE is perceived as a house mark and the word TOTAL as merely a product mark, "this would not dispel likely confusion as to sponsorship or affiliation."

Even though the word TOTAL is suggestive, here GM's mark is famous, and the Board did not find TOTAL to be "so highly suggestive that the use of applicant's house mark FAGE (along with other descriptive and non-distinctive matter) is sufficient to eliminate likely confusion with a famous mark, when used on related goods ...."

Lack of Actual Confusion: The Board found the lack of actual confusion to be a neutral factor. Of course, such evidence is notoriously difficult to find. Moreover, the record evidence did not clearly establish that there was a significant opportunity for confusion to occur, since Fage's marketplace footprint only gradually reached the general consumer market. The Board refused to make an adverse inference on this issue based on GM's failure to conduct a likelihood of confusion survey.

And so, balancing the relevant du Pont factors, the Board ruled that confusion is likely with regard to Fage's marks when used for yogurt. In light of this Section 2(d) ruling, the Board declined to reach GM's dilution claim.

The Board dismissed the opposition, in part, to one of Fage's applications, which application included both yogurt in class 29, and "sauces, spices and food flavorings, not of essential oils" in class 30. GM offered no evidence or argument regarding those class 30 goods, and so that half of the opposition was dismissed and that one application will proceed to registration for the class 30 goods.

Text Copyright John L. Welch 2011.


At 9:54 AM, Anonymous Anonymous said...

I think this is the wrong call. I find Total (for cereal) to be a weak, not famous, mark -- lauding it allegedly containing "all the vitamins and minerals, etc." one needs in one day. You've seen the commercials -- a diner waitress with 42 bowls of Kashi or GrapeNuts in one hand and one bowl of Total in the other -- with a voice over claiming you need 42 bowls to get everything you get in one bowl of Total.

As a purchaser and consumer for many years of both Total cereal and Fage Total yogurt (sometimes I even eat them at the same time for breakfast!), it never occurred to me -- even as an arguably tm-savvy person -- that they could possibly emanate from the same source or that there could be any confusion at that level.

I'm going to have the read the full opinion but based upon the information before me I heartily disagree with the Board. And I think lack of confusion for 11 years merits more than a "neutral" observation.

At 1:58 PM, Anonymous Anonymous said...

I agree with the first comment that it never occurred to me that Fage Total may have any connection at all to GM's Total.

Why would the Board need to point out it has no authority to address use, damages, injunctions, etc.? Are they hinting or suggesting that they do not want these cases and the parties should have been (or may have been better off) in USDC?

Or is it just that in the TTAB vacuum the Board had no choice on its decision? Same mark, same channels, same classes, same consumers, pretty much of an identical overlap on all factors.

So real world - no chance of confusion - but TTAB world there is.

Why did GM let this go on for 11 years at TTAB? It seems to me that a big player like that would always dial this up to USDC. Now they have had 11 years of this and they get to start all over again in USDC? Two large law firms and large companies, so I doubt it was about saving money.

At 9:05 AM, Anonymous Anonymous said...

It is especially strange that the Board would complain about the size of the record given its adoption of virtually all aspects of civil practice (including discovery) in its rules. If you allow big companies to spend money on what is important to htem, they will do so.

I agree with the first two posters on the merits of the decision. I am familiar with both brands and never connected the two. And under what set of fact would the Board find that the absence of actual confusion was a factor in the applicant's favor?


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