PICKWELL FARMS Confusable with PICTSWEET FARMS for Frozen Vegetables, Says TTAB

[Caveat: the petitioner was represented by Tonia Sayour and Kira-Khanh McCarthy of Wolf, Greenfield & Sacks, PC, home of the TTABlogger]. The Board granted a petition for cancellation of a registration for the mark PICKWELL FARMS for, inter alia, frozen vegetable, finding confusion likely with the registered mark PICTSWEET FARMS for “Frozen vegetables; frozen vegetable-based entrees." [FARMS disclaimed in both marks]. This blog post will attempt to hit the high points of the decision. The Pictsweet Company v. Moran Foods, LLC, Cancellation No. 92078530 (November 7, 2024) [not precedential] (Opinion by Judge Elizabeth K. Brock).

Laches: Respondent Moran pled the affirmative defense of laches but failed to prove same.  Pictsweet had no knowledge of the PICKWELL FARMS mark prior to the publication of Moran's mark for opposition. Therefore, the period for laches began to run as of the February 4, 2020 registration date. Pictsweet filed its cancellation petition on November 22, 2021—a delay of approximately 21.5 months. Moran failed to prove that the delay was unreasonable. Nor did Moran prove any damage resulting from the delay.

Acquiescence: In April 2021, Pictsweet contacted Moran to discuss selling its product in Moran's Save-A-Lot stores. Pictsweet filed the petition for cancellation seven months later. The Board found that this delay of seven months was excusable. Also, as previously noted, there was no proven prejudice from the delay.

Priority: "In a cancellation proceeding such as this one where both parties own registrations, priority is in issue. Pictsweet was entitled to rely on the March 6, 2015 filing date of the application that matured into its pleaded Registration. That was before Moran's constructive use date in 2018.

Likelihood of Confusion: Because the goods are identical in part, the second DuPont factor weighed "heavily" in Pictsweet's favor. The Board must presume that these identical goods travel through the same trade channels to the same classes of consumers. Moreover, the goods are low cost items that may be purchased on impulse. These factors also weigh heavily in Pictsweet's favor.

As to the marks, because the goods are in part identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board noted that both marks: "(a) comprise two terms (b) in which the first term is dominant, (c) the dominant term is a compound word (d) beginning with the verb PICK or a misspelling of its past tense, 'picked,' and (e) the mark ends with the term FARMS, which is disclaimed in both registrations. Thus, they have many similarities."

The Board found the marks to be similar in appearance and sound. "Because of these similarities and the fact that marks end with the identical element FARMS, consumers may not notice the difference in the middle of the marks—SWEET and WELL."

Indeed, considering both of these differing components, SWEET and WELL, (a) contain the letter W in the first or second position (a visually wide letter that takes up space) followed by the letter E, (b) both components follow the consonant sound-vowel sound-consonant pattern, and (c) also contain double letters, it would be easy to miss the difference between SWEET and WELL. When considering the marks as a whole, we find these differences in elements of the marks weigh less than the more meaningful similarities in the marks in their entireties.

The Board found the marks to be similar in connotation: Petitioner's mark PICTSWEET FARMS "connotes vegetables that were picked, plucked or chosen for a certain quality—i.e., sweetness—from a farm:" Moran's mark suggests "picking things at harvest then doing a good job at it."

As to the strength of Pictsweet's mark under the fifth and sixth DuPont factors, the Board found it to be "at least suggestive" and " somewhat commercially strong." Moran did not show that use of similar marks in the relevant market that weakens the PICTSWEET FARMS Mark. In sum, "the fifth factor slightly favors a finding of likely confusion and the and sixth factor is neutral."

Moran pointed to the lack of evidence of actual confusion. In a lengthy discussion, the Board found that "there has been some meaningful opportunity for actual confusion but there is insufficient evidence for us to conclude that this opportunity for actual confusion has been so significant such that the seventh and eighth DuPont factors would weigh heavily against a finding of likelihood of confusion." "[T]he seventh and eighth DuPont factors slightly weigh against a finding of likelihood of confusion."

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and it granted the petition for cancellation.

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Text Copyright John L. Welch 2024.