Practitioners warned to plead carefully before the TTAB

United States of America

In Odom’s Tenn Pride Sausage Inc v FF Acquisition LLC (Opposition 91182173, March 19 2010), the US Court of Appeals for the Federal Circuit has affirmed a decision of the Trademark Trial and Appeal Board (TTAB) in which the latter had held that the dissimilarity of an applied-for mark from an opponent’s pleaded marks was sufficient, in and of itself, to preclude a finding of likelihood of confusion as a matter of law.

FF Acquisition LLC, the operator of Farm Fresh Supermarkets, applied to register a design mark for its supermarket services depicting a farm boy wearing a cowboy hat and holding a piece of straw in his mouth.

Odom’s Tenn Pride Sausage Inc, which markets Tennessee Pride breakfast sausages through retail grocery stores, owns common law and registered trademarks for grocery products, including six registered marks for variations of Odom’s farm boy design. Odom opposed the application, claiming that FF’s mark was confusingly similar to 11 of its registered trademarks. FF moved for summary judgment. Odom responded by alleging that FF’s mark was also confusingly similar to Odom’s more visually analogous common law design marks. The TTAB granted summary judgment in favour of FF, ruling that its mark was sufficiently dissimilar to Odom’s pleaded marks to preclude finding a likelihood of confusion as a matter of law.

Affirming the TTAB’s ruling, the Federal Circuit dismissed Odom’s contention that the TTAB was required to consider the unpleaded common law marks that Odom asserted during summary judgment. Under TTAB Manual of Procedure § 528.07(b), the TTAB may deem pleadings amended to include unpleaded matters. However, the TTAB is not required to consider unpleaded matters - even when the parties agree to the amendment.

The Federal Circuit also rejected Odom’s argument that the TTAB had erred in failing to consider all the DuPont factors when evaluating likelihood of confusion (see In re EI DuPont De Nemours & Co (476 F2d 1357 (CCPA 1973))). The court stated that “a single DuPont factor ‘may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the mark’”. Furthermore, the court upheld the TTAB’s method of comparing individual attributes of the designs to determine whether the marks differed in overall impression, citing In re Nat’l Data Corp (753 F2d 1056, 1058 (Fed Cir 1985)).

Odom serves as a reminder that, in filing an opposition, an opponent should plead all pertinent common law and registered trademarks. Failure to do so may artificially limit an opponent’s rights in the eyes of the TTAB and the Federal Circuit, thus necessitating an expensive district court proceeding to plead all pertinent rights. The decision also serves as a reminder that determining likelihood of confusion is a balancing test. Therefore, while each DuPont factors guides a court’s evaluation, dissimilarity alone may be dispositive.

James L Bikoff, David K Heasley, Michael T Delaney and Taro Konoshima, Silverberg Goldman and Bikoff LLP, Washington DC

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