Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PAN-O-GOLD BAKING CO.
Serial No. 73/826,788
September 24, 1991
L. Paul Burd of Burd, Bartz & Gutenkauf for Pan-O-Gold Baking Co.
Timothy Pecsenye
Trademark Examining Attorney
Law Office 14
(Managing Attorney R. Ellsworth Williams)
Before Rooney, Quinn and Hohein
Members
Opinion by Hohein
An application has been filed by Pan-O-Gold Baking Co. to register the term "NEW ENGLAND" for "freshly baked bread and bread rolls" [FN1] on the Principal Register.
Registration has been finally refused under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the basis that, when applied to applicant's goods, the term is primarily geographically deceptively misdescriptive of them. Registration has also been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the term "NEW ENGLAND," when applied to applicant's goods, so resembles the registered mark "NEW ENGLAND" for "muffin mix" [FN2] as to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed but an oral hearing was not held. [FN3] We affirm on both grounds.
Turning first to the refusal on the basis that the term "NEW ENGLAND" is primarily geographically deceptively misdescriptive, we note that there is no dispute that such term has geographic significance or that applicant's goods do not come from the New England area. Applicant, in its response to the first Office Action, admitted that "New England is an appellation assigned to the six states of the northeastern portion of the United States" and stated that, "[a]s clearly shown on the specimens of record, applicant's goods originate in the states of Minnesota and North Dakota, geographically remote from New England". [FN4]
In support of the Section 2(e)(2) refusal, the record includes an entry from The Columbia Lippincott Gazetteer of the World which lists "New England" at 1308 as a "region ( ... pop. 9,314,453) of NE U.S., on the Atlantic; includes 6 states--MAINE, NEW HAMPSHIRE, VERMONT, MASSACHUSETTS, RHODE ISLAND, CONNECTICUT"; a definition from Webster's New Geographical Dictionary (1984) which principally defines "New England" at 831 as the "Northeast section of the United States, comprising the states of Connecticut, Maine, Massachusetts, New Hampshire, Rhode Island, and Vermont; total area 66,608 sq. m. (land area, 63,159 sq. m.); pop. (1970c) 11,845,169"; an article from The Concise Columbia Encyclopedia which describes "New England" at 593 as a "region of the NE U.S., comprising MAINE, NEW HAMPSHIRE, VERMONT, MASSACHUSETTS, RHODE ISLAND, and CONNECTICUT"; and excerpts from a December 27, 1990 search of Mead Data Central's NEXIS(R) library data base which, in the OMNI file, found various stories responsive to a request that the term "NEW ENGLAND" appear within ten words of the term "BREAD". The latter discloses stories on several bakeries, a food company, a restaurant and a food festival, all located in certain New England States, [FN5] and encompasses stories on such traditional New England fare as Boston brown bread. [FN6]
*2 Applicant argues that the Examining Attorney has not made a prima facie showing of a goods/place association between freshly baked bread and rolls and the New England region of the United States. Specifically, applicant contends that the NEXIS(R) articles "do not definitely establish a connection between 'New England' and bread" and that, in consequence thereof, "there is [not] any recognized association in the mind of the average purchaser of bread with any particular product originating in New England and known as 'New England bread'." In this regard, applicant emphasizes that:
Bread is a universal food product. In one form or another it has been known since earliest times, among all cultures in all parts of the world. It is associated with many geographical areas, but there is no evidence of its association in the minds of the purchasing public more strongly with New England than with any other area. If the public makes no goods/place association, the public is not deceived.
Applicant also argues that it does not use the term "NEW ENGLAND" in a geographically descriptive or deceptively misdescriptive sense. Rather, applicant maintains that its use of the term "is evocative of a life style, a home-spun down-East Yankee attitude or demeanor reminiscent of Pilgrim Fathers, Minutemen, Green Mountain Boys, rolling tree-covered hills, pristine lakes, covered bridges, picturesque villages, open town meetings, and the like". [FN7]
The Examining Attorney, however, argues that the record clearly indicates that the primary significance of the term "NEW ENGLAND" is geographical; that applicant's goods do not come from the New England area; and that, when applied to such goods, the term "NEW ENGLAND" is primarily geographically deceptively misdescriptive because the public would believe that the goods come from New England. Noting that only a prima facie showing that a public association exists between the term "NEW ENGLAND" and the applicant's goods need be demonstrated instead of a "definitive connection" as contended by applicant, the Examining Attorney points out that a number of the NEXIS(R) stories mention Boston brown bread as a specialty or famous dish of the New England area. Inasmuch as Boston brown bread or, simply, brown bread is the common commercial name for a type of bread and consequently would be known to the consuming public as such, the Examining Attorney maintains that it would not be unreasonable for a consumer to believe that "NEW ENGLAND" brown bread comes from that geographic location. The Examining Attorney additionally observes that:
Furthermore, applicant's own specimens indicate [that] the goods are "Brown Bread." The back panel[s] of the specimens display the words "NEW ENGLAND BROWN BREAD" all in one typeface and ... as the common commercial name for the goods. The wrapper also depicts a small "NEW ENGLAND" town. Although the trade dress of applicant can be changed, it is apparent that applicant is trading on the geographic location of its mark. Since brown bread from "NEW ENGLAND" (and Boston) is famous, certainly consumers could be reasonably expected to conclude that bread or other bakery products labeled "NEW ENGLAND" would come from this region. Consequently, the public is likely to believe that applicant's goods originate in New England.
*3 In reference to the leading case of In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982), as well as other settled precedent, the court in In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867-68 (Fed.Cir.1985), reaffirmed the test set forth in Nantucket to determine whether a term is primarily geographically deceptively misdescriptive, [FN8] emphasizing that (footnote omitted):
While the above cited precedent requires a goods/place association to support a refusal to register under § 2(e)(2), it does not follow that such association embraces only instances where the place is well-known or noted for the goods.... The court, in Nantucket, did not adopt that position. Rather, our precedent continues to hold that to establish a "primarily geographically deceptively misdescriptive" bar, the PTO must show only a reasonable basis for concluding that the public is likely to believe the mark identifies the place from which the goods originate and that the goods do not come from there. Singer Manufacturing Co. v. Birginal-Bigsley Corp., 319 F.2d 273, 275, 138 USPQ 63, 65 (CCPA 1963) (AMERICAN BEAUTY for sewing machines of Japanese manufacturer properly refused registration under § 2(e)(2).
The court further pointed out that "[t]he issue is not the fame or exclusivity of the place name, but the likelihood that a particular place will be associated with particular goods". In re Loew's Theatres, Inc., supra at 868.
We believe that applying the law to the facts of this case, a prima facie case has been made that the primary connotation of the term "NEW ENGLAND" is geographical and that it is likely that customers and prospective purchasers would infer from use of that term that applicant's goods have their origin in New England when, as admitted by applicant, they do not. The gazetteer and encyclopedia articles, dictionary definition and NEXIS(R) excerpts demonstrate that it is reasonable that the public would principally regard "NEW ENGLAND," when used in connection with applicant's goods, as designating the geographic region known by that name. This would especially be true when the term is applied to a regional specialty of that area such as brown bread. In these circumstances, it is eminently likely, as contended by the Examining Attorney, that when applied to freshly baked bread and rolls, consumers would reasonably expect that products bearing the designation "NEW ENGLAND" originate in that region and applicant has submitted no competent evidence to show that the primary significance of such term is suggestive rather than geographical or that there would be no association between New England and its goods. [FN9] Accordingly, inasmuch as a goods/place association has been established by the evidence of record, we hold that as applied to applicant's goods, the term "NEW ENGLAND" is primarily geographically deceptively misdescriptive. See, e.g., In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) ["MANHATTAN" for cookies not originating there held primarily geographically deceptively misdescriptive] and In re Midwest Nut & Seed Co., 214 USPQ 852, 854 (TTAB 1982) ["CALIFORNIA MIX" for a mixture of dried fruit and nut meats not from or processed in that state found primarily geographically deceptively misdescriptive].
*4 With respect to the refusal on the ground of likelihood of confusion, applicant asserts among other things that, while the marks are identical, confusion is not likely inasmuch as the goods are distinctly different. Applicant notes that its freshly baked rolls and bread are perishable goods which are prepared and delivered to stores on a frequent basis, usually daily; that its goods, along with similar goods of others, are normally sold in a separate area or department of a grocery store or supermarket; and that such goods have a relatively short shelf life, are sold in flexible packaging so that their freshness may be judged by feel, are ready to eat upon purchase and are stored with care in order to preserve their freshness. In sharp contrast, applicant points out that muffin mixes are not readily perishable products; that they are sold in different sections of grocery stores or supermarkets along with such similar goods as cake mixes, cookie mixes, brownie mixes and the like; and that such goods have a relatively long shelf life, are packaged in stiff boxes, have to be prepared before they are ready to eat and thus ordinarily do not come from the same source as fresh bread and rolls. [FN10]
The Examining Attorney, while conceding that the respective goods are packaged differently and have different characteristics, contends that the goods are "ultimately similar" inasmuch as a consumer purchases registrant's goods to make a fresh bakery product at home while the same consumer selects applicant's goods to receive such a product. According to the Examining Attorney, a consumer might reasonably believe that a manufacturer which offers a final product like freshly baked bread and rolls might also sell mixes for consumers to prepare the same or similar items in their own homes. The Examining Attorney additionally asserts that it is reasonable for a consumer familiar with registrant's muffin mixes to believe that registrant has now started making other bread products for purchase as freshly baked items rather than for preparation at home. Consequently, the Examining Attorney finds that freshly baked bread and bread rolls are so closely related to muffin mixes that confusion as to the origin or affiliation of the respective goods is likely to occur.
As has often been stated, it is well settled that goods need not be identical or even competitive in nature in order to support a finding of likelihood of confusion. Instead, it is sufficient that the goods are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under situations that would give rise, because of the marks employed thereon, to the mistaken belief that they originate from or are in some way associated with the same producer. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
*5 In the present case, we find that respondent's muffin mix and applicant's freshly baked bread and bread rolls are sufficiently related that, when sold under the term "NEW ENGLAND," confusion as to their source or sponsorship is likely. We judicially notice, in this regard, that Webster's Third New International Dictionary (1976) at 1483 defines "muffin" as "1a: a quick bread made of batter containing egg and baked in a small cup-shaped pan b: a similarly shaped biscuit made from yeast dough--see ENGLISH MUFFIN". Consequently, there can be no real question that registrant's and applicant's goods are closely related bread products which, notwithstanding the fact that the former is available as a mix while the latter is already baked, are competing items which are sold to the same class of purchasers through the same retail outlets for mealtime consumption. The facts that the respective goods have different shelf lives and packaging, that one is already baked while the other is not and that they may be found in different aisles of supermarkets and grocery stores are to us distinctions without a difference. Muffin mix and freshly baked bread and bread rolls both allow the consumer to enjoy fresh-baked bread products and the goods, in many instances, are substitutes for one another.
We thus conclude that purchasers and prospective customers, familiar with registrant's "NEW ENGLAND" muffin mix, would be likely to believe, upon encountering applicant's "NEW ENGLAND" bread and bread rolls, that such freshly baked products emanate from or otherwise are associated with or sponsored by the same source.
Decision: The refusals under Sections 2(e)(2) and 2(d) are affirmed.
L. E. Rooney
T. J. Quinn
G. D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/826,788, filed on September 21, 1989, which alleges dates of first use of January 3, 1989.
FN2. Reg. No. 1,470,277, issued on the Supplemental Register on December 22, 1987, which sets forth dates of first use of October 1985.
FN3. Although applicant initially requested an oral hearing, it subsequently submitted a waiver thereof.
FN4. The specimens, which bear the designation "New England," are wrappers for "BROWN BREAD" baked by:
PAN-O-GOLD BAKING CO., FARGO, N.D. 58108
ST. CLOUD, MN. 56302-MINNEAPOLIS, MN. 55447
FN5. The excerpts respectively include the following:
Traveling in search of great bakeries is rarely more pleasant than in a state like Vermont, where the pleasure of discovering a great bread or sticky bun in the middle of nowhere is joined by New England landscapes of mountains and lakes....
Among the treasures at the southern end of the state, Brattleboro contains the bakery run by Hamelman.
"When you hold a loaf of bread in your hands, I think you hold a resolution," says Hamelman....
....
Manghis' Bread, 28 School St., Montpelier: Crusty French bread and American-style loaves.... Also specialty breads and rolls. Available in specialty food stores in the region....
La Broche, 26 Elm St., Montpelier: French breads, croissants and pastries baked daily by the students at the New England Culinary Institute....
Bear Mountain Bakery, Bear Mountain Road, Wallingford: Hearty sourdough breads ... available in the specialty food stores in the local region.--Los Angeles Times, November 4, 1990;
Lepage Bakeries, Auburn, Maine, ... is best known for its Country Kitchen brand bread products, which are sold throughout New England and upstate New York.--Ad Day, February 23, 1989;
"We do our own bread. Paula Sullivan, our baker, comes in early in the morning. We serve the New England Anadama bread, blueberry muffins, a brown bread which is a little sweet, and plain white breadsticks covered with coarse salt."--Christian Science Monitor, April 25, 1990 (quoting a Mr. White in reference to menu items at his Boston area restaurant);
Here are 5 new bakery items in this company's line. Available are 8-Mini Pockets in White and Whole Wheat varieties (8 oz.), 4-Pouch Bread in White, Whole Wheat, and With Onion (10 oz.). In New England and New York supermarkets.--New Product News, July 7, 1989 (discussing "MILLDAM POUCH BREAD" from "New England Food, Malden, MA"); and
Each $25 ticket entitles the bearer to sample a number of domestic and imported wines as well as a selection of New England specialty foods such as pates, cheeses, breads, smoked meats and desserts.--Boston Globe, April 26, 1989 (reporting on the "annual International Wine and Food Festival" to be held by "[r]adio station WBUR (90.9 FM)").
FN6. The following excerpts are representative:
BOSTON BROWN BREAD (makes 1 loaf, or 12 slices) This is based on an old New England recipe dating back to the colonial era. It is really a steamed pudding, with a delicate and soft texture lightly sweetened with pungent molasses.--Washington Post, February 7, 1990;
For American chow that is both hearty and of the moment, head northward. Jasper White's Cooking from New England (Harper & Row, $27.95) is chock-full of tempting recipes and spicy anecdotes about New England cooking. Aside from traditional Yankee grub like Boston brown bread and boiled scrod, White presents elegant dishes like barbequed bluefish with smoked-shrimp butter.-- U.S. News & World Report, December 11, 1989;
In his new cookbook, Jasper White's Cooking from New England (Harper & Row), the chef revives many classics--New England boiled dinner, Boston brown bread, and fish chowder among them--giving each dish a signature detail. On the following page are several recipes from White's book, all specialties at his six-year-old restaurant on the Waterfront.--Boston Globe, November 26, 1989; and
In New England you've got Boston brown bread and clam chowder; maybe you could name 10 traditional New England dishes.--Restaurant Business, November 20, 1987 (featuring an interview with "Craig Claiborne, food writer" in a discussion of traditional regional dishes.
FN7. In particular, applicant asserts that it uses " 'NEW ENGLAND' in the same non-geographically descriptive or non-geographically deceptively misdescriptive sense as a number of prior registrants". Although applicant is correct that "[a]bstracts of ... these registrations are of record," applicant has not furnished copies of the third-party registrations upon which it relies and the Board does not take judicial notice of such registrations. See In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Consequently, it is not possible to tell whether or not one or more of the registrations issued under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), which would be indicative of an initial Section 2(e)(2) bar. We nevertheless note from the abstract furnished by applicant that one of the third-party registrations, like the cited registration, issued on the Supplemental Register and, since the registrants are not New England entities, such registrations are evidence that the term "NEW ENGLAND" was refused registration on the Principal Register on the basis of being primarily geographically deceptively misdescriptive. In any event, each case must be decided on its own facts and the abstract provided by applicant is insufficient to establish that the primary significance of the term "NEW ENGLAND" is not geographical.
FN8. The court held that in order to substantiate such a refusal, the Patent and Trademark Office (PTO) not only has to establish that the term is the name of a generally known geographic place, but also that the public would be likely to believe that the goods for which the term is sought to be registered originate in that place. In re Nantucket, Inc., supra at 893.
FN9. Even for consumers who happen to notice from the wrappers that applicant's goods are baked in Minnesota and North Dakota, it would not be unreasonable for them to assume that there is an association with New England in the sense that the dough, the recipe or the various ingredients originate in New England.
FN10. Applicant, referring to a list of various third-party registrations, also argues that it is not uncommon for the Patent and Trademark Office to issue registrations for the same or essentially identical marks to different parties for different food items likely to be sold in the same food stores and which are at least as closely related to one another as are freshly baked bread products and muffin mixes. However, the submission of a list of registrations is insufficient to make them of record. Because each case must be complete in and of itself, copies of the registrations should have been proffered if applicant desired to have the Board consider them in this proceeding. See In re Duofold Inc., supra. Each case, in any event, must be considered on its own merits and, since the goods assertedly set forth in the various pairs of third-party registrations are not as closely related as those involved in this proceeding, the third-party registrations would not aid applicant even if they had been properly made of record.