Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JONBIL, INC.
v.
INTERNATIONAL MULTIFOODS CORPORATION
June 11, 1987
Hearing: February 18, 1987
Opposition No. 70,595, to application Serial No. 456,864 and 456,865 filed December 12, 1983.
Roberta S. Bren and McAulay, Fields, Fisher, Goldstien & Nissen for Jonbil, Inc.
Frank W. Bonvino, Harold J. Kinney, Frederick E. Lange, William A. Braddock, Nickolas E. Westman, David R. Fairbairn, Charles E. Steffey, Wayne A. Sivertson, Stephen R. Bergerson, Jo M. Fairbairn, Z. Peter Sawicki, James L. Young and Walter C. Linder for International Multifoods Corporation
Before Simms, Krugman and Cissel
Members
Opinion by Krugman
Member
Applications have been filed by International Multifoods Corporation to register LONG HAUL [FN1] and LONG HAUL and design [FN2] as depicted below as trademarks for meat products, namely, jerky and sausage.
Registration in each instance has been opposed by Jonbil, Inc. As grounds for opposition, opposer asserts that it has previously used the trademark LONG HAUL for a variety of clothing goods and accessories including boots, suspenders, belts, buckles, key fobs, cologne and wallets; that it owns a number of registrations for the marks LONG HAUL and LONG HAUL FOR HER; that a substantial portion of opposer's marketing and advertising program is directed to working people, including truck drivers; that opposer's goods are sold at truck stops; that applicant's goods are also sold at truck stops and the like to the same class of purchasers and in the same manner as opposer's goods and that applicant's marks so resemble opposer's marks as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive.
Applicant, in its answer to the opposition, has admitted that its goods are sold to a variety of retail outlets, including truck stops. Applicant has otherwise denied the salient allegations in the opposition.
The record consists of the pleadings, the file of applicant's application, a number of applicant's answers to interrogatories propounded and relied on by opposer, a number of printed publications and official records relied on by opposer, a number of printed publications and official records relied on by applicant and testimony taken by both parties. Both parties have filed briefs on the case and opposer has filed a reply brief. Both parties were represented at an oral hearing held before this panel.
Opposer's priority in the LONG HAUL trademark for clothing and accessories has been established by the testimony of Marshall Bank, opposer's executive vice president and president of opposer's Long Haul division. Moreover, in connection with this testimony, opposer introduced into evidence a number of Principal Register registrations. These registrations are for the marks LONG HAUL for blue jeans, dungarees, caps, and vests; [FN3] LONG HAUL for shirts, sweatshirts, blue jeans, dungarees, caps, vests and belts; [FN4] LONG HAUL for wallets; [FN5] LONG HAUL for sheets and pillowcases; [FN6] LONG HAUL for belt buckles; [FN7] LONG HAUL FOR HER (FOR HER disclaimed) for men's and women's blue jeans and dungarees, caps and vests; [FN8] LONG HAUL FOR BOYS (FOR BOYS disclaimed) for shirts, sweatshirts, blue jeans, dungarees, caps and vests; [FN9] LONG HAUL FOR JUNIORS (FOR JUNIORS disclaimed) for shirts, sweatshirts, blue jeans, dungarees, caps and vests; [FN10] LONG HAUL SEAT CUSHION (SEAT CUSHION disclaimed) for automotive seat cushions; [FN11] and LONG HAUL COLOGNE (COLOGNE disclaimed) for cologne. [FN12] While we note that a number of the foregoing registrations were not pleaded, it is clear from the registration dates that most of the unpleaded registrations did not exist at the time the opposition was filed. In any event, applicant did not object to the introduction of any of opposer's registrations into evidence and the pleadings are considered amended to conform to the evidence.
*2 In addition to the introduction into evidence of the foregoing registrations, opposer has shown through testimony and supporting documentary evidence that it manufactures and sells a variety of clothing products and accessories under the LONG HAUL trademark through its Long Haul division which was formed in 1982. Beginning in February 1982, opposer began selling jeans, caps, t-shirts and wallets under the mark. Subsequently, opposer began selling other products under the mark, including vests, belt buckles, shirts, sweatshirts, tennis shoes, underwear, belts, jackets, suspenders, socks, watches, CB antennas, gloves, boots, work shoes, coveralls, key rings, cologne and pocket knives. Most of the foregoing products are made by third-party licensees who have entered into license agreements with opposer to use the LONG HAUL trademark. Other products have been considered for licensing under the mark, including cereal and candy.
Opposer's products are advertised and directed to a variety of working-class people, primarily truck drivers. The record shows that opposer's goods are sold to truck stop stores throughout the country and that the goods have been advertised in magazines directed to truck drivers and the trucking industry, namely, Overdrive, Owner-Operator, American Trucker's Bible, Road King and Trucker's World. Opposer has also advertised its LONG HAUL products in newspapers, in the 1984 Tractor Supply Company catalogue, in Sears, Montgomery Ward, J.C. Penney and similar catalogues and on radio stations directed to and listened to by professional truckers. In addition, opposer has promoted its goods at trade shows for truck drivers and truck stop store owners and managers.
Opposer's sales revenues of LONG HAUL products have ranged from approximately $40,000 in 1982 to over $5 million in 1985. Approximately $100,000 in income is received from licensees on an annual basis. Advertising and promotional expenses have ranged from some $14,000 in 1982 to approximately $190,000 in 1985.
In addition to opposer's sales and advertising of its LONG HAUL products, the record shows that a number of articles have been written about opposer's LONG HAUL jeans and cologne. The articles on the jeans note that the jeans are designed for truck drivers; that the jeans are strong and tough and are cut wide in the seat and thigh, have a longer rise and have higher back pockets. Similarly, the articles on LONG HAUL cologne stress the point that the product is aimed specifically at professional truckers. Stories have also appeared on various television stations on the subject of opposer's LONG HAUL jeans and cologne, again stressing the truck driver connection.
Applicant's record shows that it began using the LONG HAUL mark on its jerky and sausage in 1983. Its goods under the mark are sold through some 5000 retail establishments, including supermarkets, candy and tobacco stores, convenience stores, military commissaries and other outlets, including truck stop stores. Applicant's product is primarily displayed near cash registers. Applicant's sales have grown from approximately $1 million in 1984 to over $4 million in 1986. Advertising and promotional expenses have ranged from $300,000 in 1984 to $800,000 in 1986. Applicant advertises in trade publications directed to the convenience store and foods industry, including Convenience Store Merchandiser, Convenience Store News, Candy Wholesaler, and Food Distributors. Applicant also advertises by direct mail and radio and participates in cooperative newspaper advertising programs. Applicant also has attended trade shows directed to the candy, convenience store and grocery store industries.
*3 The record also shows that applicant has advertised its LONG HAUL product in the 1985 membership directory of the National Association of Truck Stop Operators. In addition, applicant's promotional flyers directed to wholesalers are pictured with a truck-like dispenser display and the products are touted as being great for convenience stores, truck stops and for people on the move.
We are satisfied from the record in this case that opposer has successfully established the LONG HAUL trademark as an indication of origin in connection with a variety of products primarily directed to the professional truck driver and sold through truck stop stores. While the majority of these products are jeans and related clothing accessories, opposer has shown use of the mark in connection with a number of nonclothing items, including, cologne, key fobs, sheets and pillowcases and watches. In addition, the testimony shows that opposer has considered other goods to be produced and sold under the LONG HAUL mark, including cereal and candy. While, concededly, opposer has not used the mark in connection with any food product, the question is whether purchasers familiar with opposer's LONG HAUL products sold in truck stop stores (and elsewhere) would, upon encountering applicant's jerky and sausage sold under virtually the identical trademark, be likely to believe that the respective goods emanated from the same source or were somehow associated with or sponsored by the same entity. We conclude that such confusion is likely to arise, in view of the record which demonstrates that applicant's goods are touted as truck stop store items for truck drivers. While there is no question but that applicant's jerky and sausage are also sold in outlets other than truck stops, such as convenience stores and the like, the fact remains that applicant has advertised its goods in a truck stop operator directory; that its goods are promoted to distributors as being particularly suited for sale at truck stops; that applicant provides a dispenser display for its goods in the shape of a truck and that one form of applicant's mark includes a design of a truck. We think the record amply supports a conclusion that both applicant's goods and opposer's goods, while available to the general consuming public in a variety of outlets, are particularly directed to the professional truck driver, promoted to the truck stop store industry and sold at truck stop stores. It is the Board's view that the record, showing that both opposer's goods and applicant's goods are particularly promoted to this relatively narrow universe of potential purchasers under virtually identical marks, is sufficient to indicate a likelihood of source confusion, notwithstanding the noncompetitiveness between applicant's goods and any of the goods of opposer.
While we conclude that a likelihood of confusion exists in this case in the absence of any evidence of actual confusion, we note that some evidence has been made of record on the question of actual confusion and such evidence is entitled to some, if limited, probative value and does serve to buttress or reinforce our conclusion that the opposition should be sustained. In this regard, opposer took the testimony of Ronald Ziegler, the president and chief executive officer of the National Association of Truck Stop Operators. Mr. Ziegler testified that he was familiar with opposer's LONG HAUL jeans and with the fact that opposer had expanded into other products. Mr. Ziegler further testified that in looking through the 1985 association membership directory, he noticed an advertisement for applicant's LONG HAUL beef snack and assumed opposer was responsible for said advertisement. He testified that he made this assumption because of opposer's high profile within the truck stop operators association and at the trade shows of truck stop operators.
*4 Another deposition was taken of William Hudson, general manager of Parker Oil Company, Incorporated and responsible for overseeing a number of truck stops. Mr. Hudson testified that he was familiar with a number of opposer's LONG HAUL products and that said products are sold and advertised in his truck stops. Mr. Hudson further stated that he was eating lunch one day at one of his truck stops with Marshall Bank, opposer's executive vice president and president of opposer's Long Haul division; that when they went to the cashier to pay the bill, he noticed LONG HAUL beef jerky in the candy display and that he remarked to Mr. Bank that he didn't know opposer had entered into the food line. The substance of the foregoing incident was confirmed by the testimony of Martin Wetherbee, the restaurant manager of the truck stop restaurant in question, who was also having lunch with Messrs. Bank and Hudson. Mr. Wetherbee further testified that he also believed the beef jerky product emanated from opposer.
Finally, a deposition was taken of Ms. Sara Bemiller, the promotion director of a public television station in Roanoke, Virginia and former coordinating producer for a commercial television show in Roanoke, Virginia. Ms. Bemiller testified that she was producing a show featuring a story on opposer's LONG HAUL jeans; that a portion of the show was taped at a truck stop store where LONG HAUL jeans were sold and where truck drivers could be interviewed; that she had lunch at the truck stop with Mr. Bank of opposer corporation; that upon leaving the restaurant portion of the truck stop, she noticed LONG HAUL beef jerky and that she stated to Mr. Bank: 'Oh, you make beef jerky; why didn't you tell me about that.'
The foregoing testimony of these four individuals, it is readily conceded, is insufficient to demonstrate actual confusion by potential purchasers of the respective goods in the commercial marketplace. The deponents were not truck drivers, who are the ordinary purchasers of both opposer's products and of applicant's products and who, we believe, would be likely to be confused as to the source or sponsorship of the respective goods sold under virtually identical trademarks. Moreover, all of the deponents were acquainted with, at least, in a business sense, opposer's executive vice-president Marshall Bank and had business dealings with opposer corporation. Therefore, while there is no evidence that the above-noted instances of confusion were contrived or suspect in any other way, the evidence of confusion is not entitled to the weight that evidence of confusion of truck drivers unfamiliar with opposer corporation or any of opposer's officers would have. We emphasize, then, that this evidence only serves to reinforce our finding of likelihood of confusion made as a result of the similarity of the marks and the relationship between the goods, including the identity of channels of trade and the fact that the same narrow class of customer is targeted by both opposer and applicant.
*5 Finally, with respect to applicant's argument that opposer's LONG HAUL designation is a weak mark, while opposer's mark cannot be said to have risen to the level of a famous mark [FN13] the record shows that opposer has achieved a good deal of success and recognition in the narrow field of truck drivers and truck stop stores. While LONG HAUL has a somewhat general suggestiveness as applied to the trucking industry, it cannot be said that said term is weak and there has been no evidence of any use by third parties of the mark in connection with any products. [FN14]
For the foregoing reasons, we conclude that a likelihood of confusion would arise from the contemporaneous use of the respective marks in connection with the respective goods and that the opposition is well taken.
Decision: The opposition is sustained and registration to applicant in each instance is refused.
R. L. Simms
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 456,864 filed December 12, 1983.
FN2. Application Serial No. 456,865 filed December 12, 1983.
FN3. Registration No. 1,239,538 issued May 24, 1983.
FN4. Registration No. 1,291,251 issued August 21, 1984.
FN5. Registration No. 1,294,264 issued September 11, 1984.
FN6. Registration No. 1,297,640 issued September 25, 1984.
FN7. Registration No. 1,297,798 issued September 25, 1984.
FN8. Registration No. 1,301,797 issued October 23, 1984.
FN9. Registration No. 1,310,185 issued December 18, 1984.
FN10. Registration No. 1,310,186 issued December 18, 1984.
FN11. Registration No. 1,344,248 issued June 25, 1985.
FN12. Registration No. 1,364,005 issued October 8, 1985.
FN13. Opposer introduced evidence showing that the same entities have registered the same marks for clothing as well as consumable items. These registrations include BUSCH for clothing and beer, COCA COLA for textiles, key rings and soda and SUNKIST for clothing and juices. Opposer's mark, however, cannot be considered to be of the same character as these 'famous' marks.
FN14. As opposer has correctly pointed out, the introduction of third-party registration is not evidence that the marks covered by the registrations are actually in use.