Trademarks’ Conflict-Free Co-Existence is Factor in Analyzing Likelihood of Confusion

Two trademarks that coexisted, conflict-free, for seventeen years prior to a recent trademark opposition proceeding presented no likelihood of confusion under the du Pont test, according to the Trademark Trial and Appeal Board (TTAB). ProMark Brands, Inc. (“ProMark”) sought to register its trademark, SMART BALANCE, for, among other things, frozen foods.  GFA Brands, Inc. (“GFA”) opposed that registration, arguing SMART BALANCE presented a likelihood of confusion with its previously registered trademark, SMART ONES, also for frozen foods.

In analyzing the du Pont factors, under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the TTAB concluded:

The significant differences between the parties’ marks in sound, appearance, meaning and commercial impression, particularly in light of the uncontested long history of conflict-free co-existence of the parties’ marks applied to healthy food items (albeit not frozen foods). . .outweigh any inference of likelihood of confusion raised by the overlap in goods and channels of trade, and the moderate to low degree of purchasing care exercised.

Also noteworthy, in response to GFA’s claim that its mark was “famous,” a characterization, which, if true, would accord a broader scope of legal protection to SMART ONES, was the TTAB’s conclusion that the sales figures associated with SMART ONES could not solely be attributed to that trademark.  Indeed, according to the TTAB, “the SMART ONES mark always appears” with GFA’s other famous WEIGHT WATCHERS mark.  Consequently, the TTAB was unable to attribute the significant sales figures to the use of SMART ONES, WEIGHT WATCHERS, or a combination of both marks.

The TTAB ultimately dismissed the opposition proceeding and permitted the registration of ProMark’s SMART BALANCE.

TTAB Proceeding: ProMark Brands, Inc. v. GFA Brands, Inc., Opposition No. 91194974 and 91196358

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