SMART ONES and SMART BALANCE not confusingly similar in light of peaceful co-existence

United States of America

In a precedential ruling, the Trademark Trial and Appeal Board (TTAB) has held that SMART BALANCE for frozen foods was not likely to be confused with SMART ONES for frozen foods in light of the weakness of the common term 'smart', the differences in the marks, the 17-year peaceful co-existence of the parties’ marks and the strength of the applicant’s survey evidence (ProMark Brands Inc v GFA Brands Inc (Oppositions Nos 91194974 and 91196358, March 27 2015) [precedential]). This case demonstrates that it is preferable to select strong marks that do not contain weak or commonly used terms so as to garner the broadest scope of rights possible.

HJ Heinz Co and ProMark Brands Inc (collectively, the opponents) manufacture Weight Watcher’s SMART ONES frozen foods. The SMART ONES brand was introduced in 1992 and since then has been used on a variety of frozen foods. The SMART ONES mark has been registered since 1995, and is the subject of several valid federal trademark registrations.

The applicant, GFA Brands Inc, introduced the SMART BALANCE brand in 1996 for use in connection with heart-healthy butter substitutes. GFA had expanded its use of the mark over the years to items such as milk, popcorn, peanut butter, mayonnaise, eggs and sour cream. In 2009 GFA filed two intent-to-use applications to register the mark in connection with frozen foods, snacks and desserts.

Notably, the parties’ respective products had been sold in the same grocery store chains and stores (such as Wal-Mart and Target), advertised through the same forms of media, and appeared in similar retailer circulars. The TTAB noted that SMART ONES and SMART BALANCE-branded products had co-existed in the marketplace without consumer confusion for 17 years.

In the opposition, the opponents alleged that SMART BALANCE, if used with frozen entrees and appetizers, would so resemble SMART ONES as to be likely to cause consumer confusion and to dilute the distinctiveness of its mark. The TTAB disagreed, even though it found that the goods were similar.

In analysing the relatedness of the goods, the TTAB found that the goods were so closely related as to be legally identical. In addition, the identity of established, likely-to-continue trade channels gave rise to an evidentiary presumption that the parties’ goods would appear in many of the same frozen food sections of the same stores. Because of this, the TTAB also concluded that the parties’ products would be sold to the same classes of consumers. The TTAB noted that an ordinary consumer, whether concerned or not about a healthy lifestyle, would likely exercise a moderate to low degree of purchasing care with these products.

Although the goods, the channels of trade and the consumers were all found to be similar, the TTAB found that the marks themselves were not. The TTAB found that the common term in the marks, 'smart', is laudatory and weak as it was commonly used with, and registered for, healthy, low-calorie, low-fat food products. These co-existing third-party registrations and uses demonstrated that marks containing 'smart' could co-exist because the remaining portions of the marks are sufficient to distinguish them from one another. Thus, the TTAB held that the shared term 'smart' was too weak to overcome the visual and phonetic differences between the marks, or their different connotations and commercial impressions.

The TTAB also noted that the marks have been used for 17 years in the marketplace with no confusion. Further, a well-designed survey presented by GFA showed only about a 2% likelihood of confusion, which also supported the conclusion that confusion is not likely. Although the opponents’ survey evidence showed about a 32% likelihood of confusion, the TTAB found the opponents’ survey to be flawed.

On balance, the TTAB found that the differences in the marks, the survey results and, notably, the uncontested long history of peaceful co-existence of the marks outweighed any inference of likelihood of confusion raised by the similarity of the goods and channels of trade.

This case is significant for multiple reasons, including that marks with a weak element may not enjoy a broad scope of protection despite similarities in the marks and the goods. The case also demonstrates the importance of using a well-crafted survey in a TTAB or litigation proceeding.

Elizabeth H Cohen and Janice PL Goh, Arent Fox LLP, Washington DC and New York

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