Agri Beef subsidiary wins summary judgment of no infringement in trademark infringement lawsuit brought by Allen Brothers over AB mark.

On March 8, 2006, Allen Brothers, Inc. (“Allen Brothers”) filed a trademark infringement lawsuit in the U.S. District Court for the Northern District of Illinois against AB Foods LLC (“AB Foods”) alleging that AB Foods’ use of the mark “AB” in connection with the sale of meat products infringed Allen Brothers common law trademark rights to the “AB” mark in connection the same goods in violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)) and Illinois common law.

On Wednesday, U.S. District Judge Wayne R. Andersen ruled in favor of AB Foods and granted its motion for summary judgment. See Allen Brothers Inc v. AB Foods LLC, Case. No. 06-CV-1269, 2008 U.S. Dist. LEXIS 8642 (N.D. Ill. February 6, 2008).

Founded in 1893, Allen Brothers is a nationwide supplier of high-quality, gourmet meat products to restaurants and to individual consumers with annual sales exceeding $75 million. Allen Brothers advertises its products through local and national magazines, newspapers, and radio shows; through a consumer catalog; and through such websites as allenbrothers.com and absteaks.com.

Allen Brothers argued that it had been using the “AB” mark in connection with its meat products “continuously and exclusively” in its catalogs, marketing materials, and radio advertisements, as well as on its shipping materials and websites.

AB Foods is a subsidiary of Agri Beef, Co. (“Agri Beef”) – a vertically-integrated beef producer that has used the letters “AB” as a trademark since the mid-1970s. AB Foods was organized in 2006 as part of a corporate reorganization of Agri Beef and is responsible for the production, marketing, and sales of beef and beef-related products for Agri Beef, including selling meat products to restaurants (with plans to expand the business to individual consumer sales). Agri Beef granted a license to AB Foods to use Agri Beef's “AB” mark in connection with the sale of its goods.

In order to prove its §43(a) violation, Allen Brothers had to show (1) that it had trademark rights in the mark “AB” before AB Foods' began using the allegedly infringing mark, and (2) that AB Foods' use of “AB” would likely cause confusion among consumers in the marketplace about the identity or source of AB Foods' products. Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 436 (7th Cir. 1999).

The district court focused entirely on the second factor since it was dispositive of the case – noting that while likelihood of confusion is typically a question of fact, the issue may be resolved on summary judgment when the evidence is “so one-sided that there can be no doubt about how the question should be answered.” Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir. 1996).

The court set forth the seven factors used in the Seventh Circuit to determine whether a likelihood of confusion exists: (1) similarity of the marks; (2) similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be used by consumers; (5) strength of the complainant's mark; (6) evidence of actual confusion; and (7) intent of the defendant to palm off his product as that of another. Int'l Kennel Club of Chi. v. Mighty Star, Inc., 846 F.2d 1079, 1087 (7th Cir. 1988).

The court found that the first factor – similarity of the marks – favored a finding of no likelihood of confusion. While both parties use a mark with the letters “AB”, the evidence showed that Allen Brothers' use of “AB” in its catalogs, marketing materials, and shipping materials was “almost always accompanied” by the words “Allen Brothers.” In addition, while Allen Brothers uses the “ab-” prefix in its domain names, the consumer is merely directed to Allen Brothers’ main website where the words “Allen Brothers” are predominantly displayed on the page. The court stated:

Thus, even if “AB” is the dominant portion of Allen Brother's mark, the evidence demonstrates that “AB” almost never appears alone on any of Allen Brothers' products. Therefore, a consumer will be likely to differentiate between Allen Brothers' products and those of AB Foods.

Id. at *9.

The court also commented on the visual dissimilarity of the “AB” marks used by each party:

Allen Brothers' mark is a sharp, slanted “AB” with horizontal bars cutting through the letters and is usually displayed in blue. In contrast, AB Foods' mark is a curved, connected “AB” with no sharp or angular lines and is usually displayed in maroon and white. Although restaurant buyers or individual consumers will not have the opportunity to compare the marks side-by-side, after arefully examining the marks we find that they are so visually dissimilar that there is no likelihood of confusion as to the source of the parties' respective products.

Id. at *9-10.

Allen Brothers tried to argue that confusion would exist because the marks are “aurally identical” when heard on radio advertisements. Nonetheless, the court found that, much like its catalogs, marketing materials, and shipping materials, Allen Brothers almost always references “AB” in radio advertisements in conjunction with the words “Allen Brothers” and the “absteaks.com” website mentioned in the ads directs consumers to Allen Brothers' website where the words “Allen Brothers” are predominantly displayed. Thus, the court found that this first factor favored AB Foods

As for the second and third factors, it was undisputed that the products sold by the parties are similar and that both parties are direct competitors selling their selling their meat products to restaurants and consumers (i.e., there is concurrent use among the parties), so these factors favored Allen Brothers.

As for the fourth factor – degree of consumer care – the court noted that “Allen Brothers furnishes high-quality, gourmet meat products to fine-dining restaurants and to connoisseurs of gourmet foods.” Id. at *12. The court also noted the high cost of Allen Brothers’ meat products. As such, the court inferred that “Allen Brothers' customers are sophisticated buyers who exercise a high degree of care before purchasing Allen Brothers' products” which favored AB Foods.

With respect to the fifth factor – strength of Allen Brother's mark – the court rejected Allen Brothers’ arguments that its “AB” mark was strong because a) its mark was arbitrary and thus automatically protected and b) it had used its mark for over 20 years. The court reiterated that the evidence does not show that consumers have come to identify Allen Brothers' products with the mark “AB” alone because Allen Brothers almost always uses “AB” in conjunction with the words “Allen Brothers”:

Therefore, although Allen Brothers' “AB” may be arbitrary in the sense that “AB” does not describe food products or services, it is not legally arbitrary because there is no evidence that it has retained distinctiveness as an identifier of Allen Brothers' products. See Id. at 497. Accordingly, we reject Allen Brothers' contention that it is entitled to trademark protection in “AB” as an arbitrary mark.

Id. at *15. In addition, while Allen Brothers may have used the “AB” mark in some form for 20 years, Allen Brothers did not produce sufficient evidence demonstrating that consumers have come to identify Allen Brothers' products with the “AB” mark by itself. As such, the court found this factor favored AB Foods, concluding that AB Foods' use of “AB” is unlikely to cause confusion among consumers in the marketplace as to the source of AB Foods' products.

With respect to the sixth factor – actual confusion – the court inferred from the absence of any evidence of actual confusion by Allen Brothers that there was also no likelihood of confusion, and thus found this factor to favor AB Foods.

As for the seventh factor – AB Foods’ intent to palm off its goods as those of Allen Brothers – the court observed that Agri Beef had used its “AB” mark for several decades, even before Allen Brothers began to use it mark, without any conflicts. As such, the court rejected Allen Brothers’ argument that Agri Beef chose to name its subsidiary AB Foods and to use the “AB” mark in connection with the sale of meat products in order to trade on the goodwill of Allen Brothers' name, and found this factor to favor AB Foods.

The court concluded that “Allen Brothers has failed to produce evidence that, if believed by a trier of fact, would show that consumers are likely to be confused as to the source of AB Foods' products because of AB Foods' use of ‘AB.’” Id. at *18. And given the lack of similarity in the marks, the sophistication of the consumers, the lack of strength in the mark “AB” alone, no evidence of actual confusion, and no evidence of palming off by AB Foods, the court concluded that “no rational trier of fact could find that AB Foods' use of ‘AB’ causes a likelihood of confusion and AB Foods' motion for summary judgment must therefore be granted with respect to Count One, the Lanham Act claim, as well as Count Two, the common law claim.” Id. at *18.

Treasure Island Faces Opposition from New York Restaurant Chain over DISHES

I felt like writing about something different today, and found myself perusing some of the recently filed TTAB oppositions against Las Vegas-based companies.

Treasure Island Corp. (“TI”), the owner of the Treasure Island Hotel & Casino, is seeking to register the mark THE BUFFET AT TI AMERICA'S FAVORITE DISHES (stylized) (pictured above) for restaurant, bar, and lounges services.

On October 24, 2007, Uncommon Grounds Enterprises, Inc. (“UGE”) filed an opposition against the registration of TI’s mark on the grounds of likelihood of confusion over its registered mark, DISHES (for restaurant services). See Uncommon Grounds Enterprises, Inc. v. Treasure Island Corp., Opposition No. 91180307. UGE owns a chain of four “Dishes” restaurants in the New York City area. UGE’s mark was registered on January 18, 2000, and a §15 Declaration of Incontestability was acknowledged by the USPTO on September 22, 2005.

This is apparently not the first time that TI and UGE have crossed paths. According to UGE’s opposition, TI once used the name DISHES for TI’s buffet, but stopped after receiving a cease and desist from UGE. In addition, this is not the first time that UGE has sought to oppose TI in the registration of a mark. When TI previously sought to register the mark DELICIOUS DISHES (sylized), UGE filed an extension of time to oppose the mark. However, another party, Dish D'Lish, Inc., the owner of the mark DISH D’LISH, filed an opposition first. TI eventually withdrew the application and the opposition was dismissed.

While one can see why Dish D’Lish may have had reasonable grounds for opposing TI’s application for DELICIOUS DISHES, I question UGE’s current opposition of TI’s mark based on a likelihood of confusion.

Such likelihood of confusion is judged by the TTAB based on a consideration and balancing of the thirteen factors set forth In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973):
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10. The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

The TTAB is likely to find the first factor dispositive of the case. See, e.g., Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006) (TTAB determined no likelihood of confusion based on the obvious dissimilarities of the marks for identical goods). As such, I will save the first for last.

With respect to the second factor both marks are directed to identical goods (restaurant services), so the this factor favors UGE.

With respect to the third factor, neither party has any restriction or limitations on trade channels or classes of consumers in their respective descriptions of services. As such, the TTAB will presume that the services are offered in all normal channels of trade to all the normal classes of consumers for such services. Any argument about UGE’s restaurant services being limited only to the New York area is rebutted by the mark’s presumption of an exclusive right to nationwide use regardless of the actual extent of use. See Section 7(b) of the Trademark Act (15 U.S.C. §1057(b)). While TI’s restaurant services are likely to be limited to its Las Vegas location and UGE restaurant services are currently limited to the New York City metro area, the fact is that UGE could open a restaurant in the Las Vegas area. In such case, there would be overlap in the channels of trade.

With respect to the fourth factor, restaurant consumers could easily be prone to source confusion if the marks are sufficiently similar. As such, this factor depends on the outcome of the first factor (discussed below).

With respect to the fifth factor, UGE asserts in its opposition that its marks are “famous.” Of course, UGE does not cite any evidence to back up this claim. While “famous” for purposes of likelihood of confusion is not the same as “famous” for dilution (in which case UGE would have no claim of fame whatsoever), such claim to fame still requires a company to show a level of fame similar to what has been found to be “famous” with respect to other consumer products. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).

Without seeing any figures regarding UGE’s advertising and sales, UGE likely can, at most, maintain that its mark is strong. How strong though is questionable. A Google search did not reveal much about this restaurant. Surprisingly, it does not appear to even have its own website. Of course, not having a website does not mean the mark identifying the restaurant can’t be famous – but one would expect a “famous” restaurant would be one that is at least talked about by others on the Internet. All I could find were a few sites reviewing the restaurant (here and here). So, with all due respect to UGE, the DISHES mark seems “weak” (but not “very weak”) and as such, is entitled to a restricted range of protection, especially given its merely suggestive nature in light of the services described in the mark’s registration.

With respect to the sixth factor, there does appear to be other restaurants using a name similar to UGE’s mark for restaurant services. A quick Google search showed at least two other restaurants using a name similar to UGE’s mark for restaurant services: Dishes Restaurant (in Hartford, CT) and Little Dishes. While this is not a large amount, it does show that there are other restaurants out there using a mark that more closely resembles UGE’s mark than does TI’s proposed mark. This factor slightly favors TI.

With respect to the seventh and eighth factors, UGE does not cite any evidence of actual confusion. Of course, such absence of evidence of actual confusion could be due to scope of use of both UGE’s mark and TI’s mark – the former being concentrated mostly in the New York area while the latter is primarily in the Las Vegas area. Because of the lack of any significant opportunity for actual confusion to occur, the absence of actual confusion is typically considered of little probative value.

Of all the factors, however, the one that is probably most significant to this case is the very first factor – similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. On the one hand, UGE’s mark is not very strong, which normally requires the registrant to show a strong similarity between the two marks to support a finding of likelihood of confusion. See Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627, 634 (7th Cir. 1968), cert. denied, 392 U.S. 927 (1968). However, where the goods and services at issue are identical (as is the case with UGE and TI), the degree of similarity between the marks necessary to support a finding of likelihood of confusion is less than it would be if the goods were not identical. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

The test for similarity is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion by the average consumer (who normally retains general impressions of trademarks) as to the source of the services offered is likely to result. Most importantly, however, is that while the marks are considered in their entireties, one feature of a mark may be more significant than another, and courts may give more weight to such dominant feature in determining the commercial impression of a mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

Because UGE’s mark is only a single word, it has no specific dominant feature – the word DISHES in association with a restaurant gives off the commercial impression of a restaurant that serves “food dishes.” TI’s mark, on the other hand, has the word “buffet” as its dominant feature along with the words “the” and “at TI” on the opposite sides. Furthermore, the word “dishes” is part of the phrase “America’s Favorite Dishes” appearing below the stylized “Buffet.”

In terms of appearance, sound, and meaning, the two marks are very dissimilar. The overall commercial impression of TI’s mark in association with restaurant services is that of a buffet which serves popular American “food dishes.” While UGE notes that the PTO required TI to disclaim the words “America’s Favorite” and “Buffet” apart from the mark as shown, this does not change the overall commercial impression that the mark, as used by TI, gives to the average consumer. Accordingly, I say that this factor favors TI.

Conclusion
While there is still enough ambiguity surrounding UGE’s opposition that some surprise evidence might come to light which changes the balance of the aforementioned likelihood of confusion analysis, a consideration of all the relevant factors, particularly the “weakness” of UGE’s mark and the dissimilarity between the two marks, tends to favor a finding of no likelihood of confusion.

All that remains to be seen is whether TI will go forth with this battle – or just change the name of its buffet (which is not uncommon amongst Las Vegas hotels).

Now I know where I'm going to be eating Thanksgiving Day.