Weak marks can attain fame through substantial use and recognition

United States of America

After expressing total frustration, the Trademark Trial and Appeal Board (TTAB) has ended what it described as “acrimonious” and “tortuous” 11-year-old opposition proceedings by General Mills Inc, owner of the TOTAL mark for cereals, against Fage Dairy Processing Industry SA, the applicant of TOTAL for yogurt (General Mills Inc v Fage Dairy Processing Industry SA (Oppositions Nos 91118482 et al, September 14 2011)).

General Mills is the sixth-largest food manufacturer in the world, selling a wide variety of products, including ready-to-eat cereals and yogurt. Fage is a Greek dairy company that introduced its Greek strained yogurt into the US market in 1998.

Since the evidentiary record exceeded 20,000 pages, the TTAB spent considerable time on some evidentiary issues, including taking the parties to task for their “overzealous” and “scorched earth litigation tactics”. The TTAB admonished the parties that, since its jurisdiction is limited to determining issues of registration, the tactics for this case were excessive.

The TTAB then determined whether General Mills’ TOTAL mark was famous, since a finding of fame “plays a dominant role” in determining the issue of confusion. In view of the overwhelming evidence of TOTAL’s brand awareness based on its market share, long history of use of the mark and extensive advertising campaigns, the TTAB ruled that General Mills’ TOTAL mark was famous for ready-to-eat cereals. Even though Fage argued that the brand was in decline, as the sales of TOTAL cereal were decreasing, the TTAB rejected this argument since the brand awareness had remained steady. The TTAB further observed that, even though the TOTAL mark was conceptually weak, indicating that the product was a total nutritional source, even weak marks can acquire fame through substantial use and recognition.

The TTAB then analysed whether the goods were similar, finding similarity due to the complementary and competitive relationship between cereal and yogurt. In support, the TTAB noted that yogurt and ready-to-eat cereals were related in the mind of consumers who mixed cereals with yogurt and even purchased yogurt sold in combination with a packet of cereals. The TTAB also noted that potential purchasers were not necessarily sophisticated because these inexpensive grocery items were purchased generally on impulse.

The TTAB further considered whether the marks were confusing, since Fage's marks either had 'total' as a prominent element of a combination mark, or 'total' as a less prominent element. The TTAB held that Fage's marks were similar to General Mills’ because the word 'total' in Fage's marks was the most prominent and memorable component to consumers who would focus on the word 'total' as the source-identifying element. Although the TTAB further discussed third-party use and actual confusion factors, it held that these factors were not highly probative in this case. Therefore, based on those grounds, the TTAB concluded that confusion was likely and sustained the opposition.

Even though General Mills has won the day at the trademark office, it remains to be seen who will be the TOTAL victor in the marketplace as each party has since filed district court actions against the other.

Dennis S Prahl, Ladas & Parry LLP, New York

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