Monday, April 22, 2024

TTABlog Test: Are Backpacks, Wallets, and Purses Related to Cake Under Section 2(d)?

Hostess Brands, owner of the registered mark SUZY Q'S for "cake," opposed the application of Holly Sue Williams to register the mark SUZYQ for "Backpacks; Wallets” and “purses," claiming a likelihood of confusion under Section 2(d). The marks are close enough, but what about the goods? How do you think this came out? Hostess Brands, LLC v. Holly Sue Williams, Opposition No. 91272724 (April 18, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Hostess also alleged prior common law rights in the SUZY Q'S mark for clothing and tote bags, but the testimony of its witness on the issue of priority was vague and inconsistent. There was no specific testimony describing the type of clothing or merchandise. no information as to where or when these goods were sold, and no documentary evidence for any such clothing, clothing accessories or merchandise. One witness testified irrelevantly regarding use of various other Hostess brands (HOSTESS, TWINKIES, DONETTES, SNO BALLS, DING DONGS, and HO HOS) for these goods. 

The Board therefore found that Hostess "has not established prior use of SUZY Q’s for any particular clothing goods or clothing accessories or other merchandise prior to Applicant’s application filing date."

As to the strength of opposer's registered mark, two third-party registrations for non-food items were insufficient to dent the commercial strength of SUZY Q'S, and there was no evidence of use in the marketplace of SUZY or SUZY Q’S with cake. 

Opposer's witnesses testified that the SUZY Q’S mark, in use since 1961, is widely recognized as a source indicator for cakes, as is the house mark HOSTESS, and the former has been in use since 1961. The Hostess Brands’ gross profit for 2022 was $465,679,000, and the advertising and marketing expenditures for Hostess Brands was $21.3 million, $9.5 million, and $6.2 million for the years ended December 31, 2022, 2021 and 2020 respectively.

The Board, however, found the evidence inadequate to prove fame for the SUZY Q'S mark. The witnesses provided no specific sales or advertising information for the SUZY Q’s brand alone. Instead, opposer’s witnesses generally discussed sales, marketing and advertising expenditures as a whole for its other Hostess Brands marks (HOSTESS, TWINKIES, DONETTES, SNO BALLS, DING DONGS, and HO HOS).

In view of the foregoing, we find that Opposer’s mark is a conceptually strong mark that is entitled to the normal scope of protection of an inherently distinctive mark. The strength of the mark SUZY Q’S is neutral in the likelihood of confusion analysis.

Turning to the goods, the Board found that the evidence did not establish that cake and wallets, backpacks and purses are related.

[T]he record is devoid of any evidence suggesting that wallets, handbags and backpacks may emanate from these large commercial bakery companies under a house mark or product mark and that consumers are accustomed to seeing backpacks, wallets and purses branded with a commercial bakery house mark or product mark.

With regard to trade channels, opposer’s witnesses testified that its goods are offered in retail consumer and grocery stores and online grocery stores, in convenience stores, and through vending machines.  Applicant Williams sells her handbags via her website and social media accounts. The Board was not impressed: "The fact alone that both parties may offer their goods online is insufficient to find overlapping channels of trade." The Board found the DuPont factor relating to channels of trade to be "neutral." [Seems like it should favor the applicant - ed.]

Based on the lack of proof of relatedness and the neutrality of the channels of trade, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: I've had a few of these Hostess snacks. To me, they always look better than they taste.

Text Copyright John L. Welch 2024.


At 10:11 AM, Anonymous Anonymous said...

The TTAB clearly got this wrong. There are over 20 use-based third party registrations showing cakes and purses, wallets, and backpacks being sold under the same mark. We all know that fact alone is indisputable proof that the goods are related.

Seriously though, it is nice to see some sanity brought to the "relatedness" prong of the 2d analysis for this one. But it would be nice if ex parte applications received the same fair shake as inter parte proceedings.

One last thought - is it me or is Hostess Brands sticking its neck out here? Seems to me that Hostess has exposed itself to a judicial estoppel argument if (when) some clothing company eventually challenges a new Hostess brand.

At 11:28 AM, Anonymous Anonymous said...

You yadda yadda'd the best part. The opposer's brief was stricken as overlength, and the applicant didn't file a brief or evidence, so the Board decided on a limited record. And while it's gratifying to see the Board get one of these right, this one seems like a slam dunk, but reading the decision, it was actually close! Opposer might have actually won if the applicant's goods had been clothing, which is equally absurd.

At 2:55 PM, Anonymous Anonymous said...

Well, I was going to congratulate the lawyer for the individual applicant (vs larger, better funded opposer), went to TTAVUE....and learned that Applicant filed an answer but no testimony, no trial evidence, and no brief. Board's opinion duly notes that she was not obligated to do so. Also learned that the brief from Hostess was stricken b/c it was in excess of the page length (73pp), and they didn't file a motion for leave with the Board.

Lesson 1: Sometimes an Applicant can win just by showing up and not defaulting.

Lesson 2: It's always dangerous when the tribunal is in the position of arguing the other side's case. The Board (or judge) inevitably does a much better job than the party would have done. Plus, we all fall in love with our own arguments. So, a loss becomes more likely.

Lesson 3: Don't get off on the wrong foot with the Board by filing an overly long brief!

At 7:47 PM, Anonymous Anonymous said...

"I've had a few of these Hostess snacks. To me, they always look better than they taste."

I have found the same to be true of purses.

At 3:34 PM, Blogger John L. Welch said...

Similarity of taste is not a DuPont factor.


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