Seabrook Foods, Inc. v. Bar-Well Foods Ltd.

568 F.2d 1342, 196 U.S.P.Q. (BNA) 289, 1977 CCPA LEXIS 91

Opinions

MILLER, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board (“board”)¹ dismissing Seabrook’s opposition, filed April 22, 1974, to Bar-Well’s application No. 463,140, filed July 16, 1973, for registration of the mark shown below for frozen fruits and frozen vegetables. We affirm.

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BACKGROUND

Opposition is based on Seabrook’s prior use of the mark shown below, registration No. 819,209, issued November 22, 1966, for ■ frozen prepared foods including a variety of frozen vegetables.²

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Opposer is the third largest manufacturer, in terms of sales, of frozen vegetables in the United States. Its composite mark appears several times on its packages, sometimes without the drawing of a farm. On at least some packages, the principal design portion of the mark, termed by Seabrook a “stylized leaf design,” ³ surrounds a picture of a hand placing a food product enclosed in a clear plastic bag into a pan of boiling water. The words “In Boilable Bag” appear immediately below the design.⁴

Bar-Well is a Canadian corporation engaged in the processing, importing, and exporting of frozen foods. The board found that “[approximately 90% of the orders for [Bar-Well’s] goods are made by telephone,” with customers usually ordering by the name “Arctic Gardens.” Bar-Well introduced a number of third-party registrations showing use of designs assertedly similar to both its and Seabrook’s design portions of their respective marks. It also presented evidence showing actual use of two assertedly similar design marks on frozen foods. In answer to Seabrook’s interrogatories, Bar-Well admitted that “it had general knowledge of the use of the design on Op-poser’s packaging as well as the use of a substantially identical design by other parties.”

Although the board found that “the goods of the parties are for all practical purposes identical,” it concluded that there would be no likelihood of confusion of consumers by contemporaneous use of the two marks by the parties. It noted that Sea-brook had offered no evidence to support its allegation that its design, per se, had “acquired great value as an identification of source of opposer” except for its volume of sales and that the third party uses and registrations introduced by Bar-Well suggested that Seabrook’s design was not “unique in the field of food products.” The board also concluded that Seabrook had not proved that Bar-Well adopted its (Bar-Well’s) design “with an intent to trade upon the goodwill of opposer.”

OPINION

The threshold question is whether the design portion of Seabrook’s mark functions independently of the word portion of the mark in identifying and distinguishing the goods of Seabrook from those of others.

The board did not comment on whether it considered Seabrook’s design inherently distinctive, although, from its decision to dismiss the opposition, it evidently was not persuaded that the design makes such an impression on consumers that they will assume Seabrook to be the source of the goods upon seeing a similar design on identical or closely related goods.

In determining whether a design is arbitrary or distinctive this court has looked to whether it was a “common” basic shape or design,⁵ whether it was unique or unusual in a particular field,⁶ whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods,⁷ or whether it was capable of creating a commercial impression distinct from the accompanying words.⁸

On the evidence of record, we are persuaded that Seabrook’s design is more akin to the decorative panel in E. J. Brack & Sons, supra note 7, which served as background for the word portion of the mark and was held to be “not itself distinctive,” than to the label in Swift & Co., supra note 7, which this court held to be “an unmistakable, certain, and primary means of identification pointing distinctly to the commercial origin of such product.”⁹

We note Bar-Well’s evidence of third-party uses and registrations of similar marks on frozen foods,¹⁰ indicating that Seabrook’s “oval” design is not unique in this field. Particularly noteworthy are the High Liner and Acme-Ideal marks¹¹ in actual use on frozen fish and frozen vegetables, respectively. To frame the word portion, the composite High Liner mark includes a highly similar “oval” to that of appellant, and the composite Acme-Ideal mark includes a modified “oval.”¹²

The only evidence presented by Sea-brook on secondary meaning is the sales volume of its products. Although such evidence may have relevance in establishing secondary meaning (see In re Hollywood Brands, Inc., 214 F.2d 139, 41 CCPA 1001, 102 USPQ 294 (1954)), it is not necessarily indicative of recognition of the mark by purchasers as an indication of source of the goods. See In re International Spike, Inc., 190 USPQ 505, 507 (TTAB 1976), and cases cited therein. There is no persuasive evidence that the design portion of Seabrook’s mark has acquired secondary meaning, such as might be shown by a consumer survey or by advertising emphasizing the design portion of the mark to potential customers coupled with a showing that such advertising had consumer impact. All sales were made under the composite words-plus-design mark.

We conclude that the principal function of Seabrook’s design is not to identify and distinguish the source of the goods. Seabrook contends that it “intentionally selected this mark because its distinctiveness would enable the design to distinguish its products from those of others.” However, regardless of Seabrook’s intentions, it is the association, by the consumer, of the “oval” design with Seabrook as the source that is determinative. See Plastilite Corp. v. Kassnar Imports, supra note 6; Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (Cust. & Pat.App.1975). Contrary to Seabrook’s assertions, it does not appear that “[t]he design is displayed prominently and is visually outstanding in relation to everything else on the package, including the word mark Seabrook Farms.” The mark appearing on the side and end flaps of Seabrook’s packages always consists of the words “Seabrook Farms” framed by the “oval” design. The design is never displayed alone. Its only use separately from the words “Seabrook Farms” (alone or with the drawing of a farm) is with a picture of a hand placing a plastic bag of food product into a pan of water accompanied by the words “In Boilable Bag,” and this is on a package also containing the design 'with “Seabrook Farms.”

Since Seabrook has not shown that the design portion of its mark is inherently distinctive or that it has acquired secondary meaning, the ultímate issue of likelihood of confusion must be determined from a consideration of the marks as a whole.¹³ On this basis, we hold that there is no likelihood that purchasers confronted with the involved marks, which have totally different word portions and convey different commercial impressions (for example, “Arctic” and the penguin on the Bar-Well’s mark conveys the impression of frozen goods; “Farms” and a drawing of a farm on Seabrook’s mark conveys an impression of where the goods were grown), would attribute a common source to the goods of the parties.

Seabrook raises the issue of alleged “intentional copying” by Bar-Well. However, the only evidence on the point is an admission from Bar-Well that one of its officers was aware of Seabrook’s mark at the time Bar-Well adopted its mark, and a denial that it copied Seabrook’s design. More than this is required to establish intentional copying, the dissenting opinion to the contrary notwithstanding.

The decision of the board dismissing the opposition is affirmed.

AFFIRMED.

Footnotes

1

. 193 USPQ 797 (1977).

2

. The drawing of Seabrook’s mark is lined for the colors blue and green.

3

. Appellant refers to a “leaf” design (within which the words and farm design appear), while the board refers to “oval” design with the notation that the design “is not strictly speaking an oval.” See Marcalus Mfg. Co. v. Watson, 103 U.S.App.D.C. 299, 258 F.2d 151, 118 USPQ 7 (1958). We observe that what appears to be two stems in appellant’s design indicates that the design is not strictly speaking a leaf.

4

. The reverse side of such packages shows the same picture of the hand placing a bag into boiling water without the “oval” (“leaf”) design but with directions for cooking the contents of the package.

5

. See, e. g., In re Hillerich & Bradsby Co., 204 F.2d 287, 40 CCPA 990, 97 USPQ 451 (1953); In re David Crystal, Inc., 49 CCPA 775, 296 F.2d 771, 132 USPQ 1 (1961).

6

. In re Data Packaging Corp., 453 F.2d 1300, 59 CCPA 776, 172 USPQ 396 (1972); see also, In re Hillerich & Bradsby Co., supra note 4, and Radio Corp. of America v. Decca Records, Inc., 51 F.Supp. 493, 58 USPQ 531 (D.C.N.Y.1943).

7

. In re General Tire & Rubber Co., 404 F.2d 1396, 56 CCPA 867, 160 USPQ 415 (1969); Plastilite Corp. v. Kassnar Imports, 508 F.2d 824, 184 USPQ 348 (Cust. & Pat.App.1975).

8

. In re E. J. Brach & Sons, 256 F.2d 325, 45 CCPA 998, 118 USPQ 308 (1958); In re Swift & Co., 223 F.2d 950, 42 CCPA 1048, 106 USPQ 286 (1955).

9

. Evidence in the Swift case showed that Swift’s extensive advertising had conditioned purchasers to “Pick the POLKA DOT Package.” Seabrook has presented no such objective evidence, a gap which the dissenting opinion undertakes to fill subjectively.

10

. This court has repeatedly held, in cases involving the issue of likelihood of confusion, that food products are related goods. See, e. g., Continental Nut Co. v. Le Cordon Bleu, S.a.r.l., 494 F.2d 1395, 181 USPQ 646 (Oust. & Pat.App.1974); In re Continental Baking Co., 390 F.2d 747, 55 CCPA 967, 156 USPQ 514 (1968). Here, the similarity of the goods — frozen processed foods — is apparent; whether fish, meat, or vegetables, they are likely to be sold in the same section of a supermarket.

11

. See 193 USPQ, supra note 1, at 799.

12

. The other third-party registrations appear to have little evidentiary value in determining the scope of protection to be given opposer’s mark since they are not shown to have been in actual use. Hunt Foods & Industries, Inc. v. Gerson Stewart Corp., 367 F.2d 431, 54 CCPA 751, 151 USPQ 350 (1966).

13

. We do not believe it appropriate here to apply the general rule that it is the word portion of a composite mark that is dominant. The board apparently overlooked the fact that neither Seabrook’s registration nor Bar-Well’s application contains any limitation on methods of distribution or channels of trade; presumably the goods can be displayed side-by-side for sale in a supermarket. Since most, if not all, supermarkets today are self-serve, purchasers would not “call for goods,” but would “look” for them. As pointed out in note 8, supra, appellant has not, for example, shown any advertising for shoppers to “look for the leaf design.”