Appealed from: Trademark Trial and Appeal Board
Before Mayer, Circuit Judge, Friedman, Senior Circuit Judge, and Lourie, Circuit Judge
FRIEDMAN, Senior Circuit Judge.
The question in this appeal is whether the Trademark Trial and Appeal Board (Board) correctly granted summary judgment that there is no likelihood of confusion between the appellant Kellogg Company Kellogg's FROOT LOOPS mark and the appellee Pack'em Enterprises, Inc. Pack'em's FROOTEE ICE mark. We affirm.
Pack'em filed an application to register the mark FROOTEE ICE and accompanying elephant design for use on packages of flavored liquid frozen into bars, as shown below:
disclaiming the words "FROOTEE ICE" apart from the mark as shown. Kellogg opposed the registration, alleging likelihood of consumer confusion, with its FROOT LOOPS registered mark, in plain, capital letters, for cereal breakfast foods, stickers, and cereal-derived products to be used as breakfast food, snack food, and ingredients for making food. Pack'em moved for summary judgment on Kellogg's opposition, alleging that there is no likelihood of confusion between the marks.
Kellogg opposed Pack'em's motion with affidavit evidence that: (a) Kellogg is one of the largest ready-to-eat breakfast cereal companies; (b) Kellogg has continuously used the mark FROOT LOOPS since 1963 in association with a variety of products, including breakfast cereal, dessert sundaes, shakes and frozen confections; and (c) Kellogg has expended more than $135,000,000 in advertising and promotion of the FROOT LOOPS mark, and had sales of FROOT LOOPS products exceeding $750,000,000.
The Board granted Pack'em's motion for summary judgment and dismissed the opposition. The Board applied In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), which enumerated thirteen evidentiary factors to be considered in determining likelihood of confusion. Id. at 1361, 177 USPQ at 567.
The Board held that the first of the duPont factors, "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression," was dispositive of the issue and warranted summary judgment in favor of Pack'em. It noted that Pack'em's mark has an elephant design and stylized script, while Kellogg's does not, and that the marks share no common words, Pack'em's using FROOTEE, a misspelling of "fruity," and Kellogg's using FROOT, a misspelling of "fruit."
The Board held that "considering the marks in their entireties, . . . they differ so substantially in appearance, sound, connotation and commercial impression that there is no likelihood that their contemporaneous use by different parties will result in confusion." The Board stated that it would so conclude
even if opposer offered evidence at trial establishing that it has made prior and continuous use of its mark on goods, such as fruit-flavored frozen confections, which are very closely related to the goods identified in applicant's application; that the goods move through the same channels of trade to the same classes of purchasers; that the goods are purchased casually rather than with care; and that opposer's mark "FROOT LOOPS" has become a very strong and well known, indeed, famous, mark as applied to its goods in commerce. That is, opposer, in responding to the motion for summary judgment on the opposition, has not set out any evidence that it could produce at trial which could reasonably be expected to cause us to come to a different conclusion. The first Dupont factor simply outweighs all of the others which might be pertinent to this case. Accordingly, ...