Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SAFEWAY STORES, INCORPORATED
v.
BEL CANTO FANCY FOODS, LTD.
November 18, 1987
Opposition No. 73,656 to Application Serial No. 544,494 filed June 24, 1985.
Richard C. Stanton for Safeway Stores, Incorporated
Gottlieb, Rackman & Reisman for Bel Canto Fancy Foods, Ltd.
Before Sams, Rooney and Hanak
Members
Member
Bel Canto Fancy Foods, Ltd. seeks registration of BEL ARIA in block letters for "food products, namely, pesto sauce, green sauce, walnut sauce, dried tomatoes, artichoke spread, dried tomato spread, olive spread and mushroom spread." [FN1]
Opposer Safeway Stores, Incorporated is the owner of the trademark BEL-AIR which it uses on a wide array of frozen food and frozen concentrated juice products. Opposer is the owner of eight registrations for BEL-AIR, the particulars of which are as follows:
§§8&15
Reg. No. Goods Issued Affidav- Renewed
its
--------- --------------------------------------- -------- -------- -------
568,207 Frozen Fresh Vegetables 12-23-52 1957 9-12-72
568,301 Fresh Frozen Concentrated 12-23-52 1957 9-12-72
Orange Juice, Frozen Berries,
and Frozen Vegetables
637,246 Frozen Concentrates used in the 11-13-56 1961 9-14-76
and Frozen Concentrates used
in the Preparation of Limeade
653,499 Frozen Grape Juice Concentrate 10-22-57 1962 7-19-77
986,565 Frozen Pies and Frozen Waffles 6-18-74 1979
1,017,528 Frozen Non-Dairy Confections on sticks 8-5-75 1980
1,035,883 Frozen Prepared Entrees--namely, 3-16-76 1981
salisbury steak, sliced turkey,
sliced beef and veal parmagian;
frozen prepared dinners consisting of
fried chicken, sliced beef,
sliced turkey, chopped beef,
meat loaf, veal parmagian with
potatoes
and vegetables; and beans and franks
with fruit and corn bread
(Class 29); frozen prepared entrees
--namely, macaroni and cheese;
frozen prepared dinners--namely,
macaroni and cheese with fruit
and vegetables and spaghetti
with vegetables and cake (Class 30)
1,081,949 Frozen bakery goods--namely, frozen 1-10-78 1983
bread dough, frozen donuts, frozen
honey buns
*2 It is the position of opposer that the contemporaneous use of applicant's mark and opposer's mark is likely to result in confusion, mistake or deception. While opposer does not make specific reference to Section 2(d) of the Lanham Trademark Act, it is clear that this is the ground upon which opposer bases its opposition.
The record consists of the pleadings; the file history of application Serial No. 544,494; the testimony deposition (with exhibits) of Thomas C. O'Ban, manager of opposer's Frozen Foods Department; third-party trademark registrations for various food items of marks containing the prefix (or suffix) BEL and/or BELL made of record by applicant pursuant to a properly filed notice of reliance; and an extract from Rand McNally The New International Atlas (1981) showing various listings of "Bel Air" made of record by applicant pursuant to a properly filed notice of reliance. Applicant and the opposer have filed briefs. A hearing was not requested.
Opposer makes three fundamental arguments in support of its contention that the contemporaneous use of the two marks is likely to result in confusion, mistake or deception. First, opposer alleges that "applicant's BEL ARIA mark differs very slightly from opposer's mark BEL-AIR." (Opposer's brief page 3). [FN2] Second, opposer argues that its frozen food products and applicant's condiments are sold in the same channels of trade, namely, retail food stores. (Applicant's brief pp. 3-5). Finally, opposer contends that condiments or spreads (applicant's goods) are "customarily used on or in connection with" some of opposer's frozen food products, namely, frozen prepared entrees, frozen prepared dinners and frozen bakery goods. (Opposer's brief page 5).
Based on the foregoing, it is opposer's contention that consumers will believe that BEL ARIA condiments "originate with or are endorsed, sponsored by or somehow connected with the source of BEL-AIR food products." (Opposer's brief page 5). In addition, opposer argues that it is reasonable to assume that consumers will believe that "opposer has expanded its widely known line of frozen foods to include condiments customarily used on or with such foods." (Opposer's brief page 5). [FN3]
Turning to the marks themselves, this Board is of the view that BEL-AIR (in block letters or on a leaf design) and BEL ARIA are somewhat similar in appearance. As for similarity as to sound or pronunciation, while both marks contain the common component BEL, the AIR component of opposer's mark and the ARIA component of applicant's mark are decidedly dissimilar. Hence, viewing the marks in their entireties, it is the opinion of this Board that in terms of pronunciation the marks are only slightly similar.
As for similarity as to meaning or connotation, opposer somewhat surprisingly argues that the marks lack any connotation in that "each mark is coined and arbitrary." (Opposer's brief page 3). Applicant, on the other hand, argues that "the commercial impressions of the marks are vastly different. Opposer's mark has a geographic connotation ... In contrast, Applicant's mark BEL ARIA has a definite 'Italian' connotation resulting from a combination of the Italian word 'Bel' or ('Bella') meaning beautiful and the word 'Aria'--a song in an opera, an opera being associated with the Italian tongue." (Applicant's brief page 12). This Board is of the view that to the extent that consumers would derive any connotation from opposer's mark BEL-AIR, they would perceive it as a geographic term or possibly as the French term for "beautiful air". As for applicant's mark BEL ARIA, this Board agrees that said mark does have an Italian connotation. This connotation is reinforced by the nature of the condiments for which applicant uses and seeks to register this mark. While goods such as pesto sauce and olive spread are not associated solely with Italy, they are goods which the average consumer in this country could associate with Italy as well as other geographic areas. Furthermore, this Board concurs with applicant that some consumers in this country would understand ARIA to mean a song in an opera. However, while this point was not raised by the opposer, the Italian word "aria" also means "air". See Cassell's Italian Dictionary (1978). Nevertheless, this Board doesnot think it proper to take the French expression "bel air" and the Italian expression "bel aria" and then convert both into English and compare the English translations to determine whether there is similarity as to connotation, especially in this case. [FN4] See 2 McCarthy, Trademarks and Unfair Competition, § 23:14 at page 80 (2d ed. 1984) ("If the two marks alleged to be confusingly similar are both foreign words, it may be that the doctrine of foreign equivalents is not applicable ..."). See also In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed.Cir.1983) where the Court cautioned against applying the doctrine of foreign equivalents even in the context of an English word versus a foreign word where the words or terms deemed to be equivalent in point of fact have more than one recognized meaning, as does the Italian word "aria." In short, as to meaning or connotation, this Board is of the view that opposer's mark most likely conveys a geographic connotation, [FN5] whereas applicant's mark, especially when used in connection with the goods specified in the application, conveys an Italian connotation, or at least some Romance language connotation.
*3 This Board concludes that applicant's mark and opposer's mark are somewhat similar in appearance, are only slightly similar in sound or pronunciation, and are essentially dissimilar in terms of meaning or connotation.
Turning to opposer's argument that the channels of trade (i.e. retail food stores) are the same for the goods of both opposer and applicant, this Board, while not disagreeing with opposer, is of the view that this factor, while relevant, is not as important as a comparison of the differences and similarities in the marks and goods themselves. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the customer ... The means of distribution and sale, although certainly relevant, are areas of peripheral inquiry. The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").
With that in mind, we turn to a consideration of opposer's frozen food products and applicant's condiments. Opposer acknowledges that the respective goods--while both in the broad category of food products--are otherwise essentially different. As previously noted, opposer attempts to minimize the differences in the goods by noting that condiments such as those sold by applicant are "customarily used on or in connection with" frozen prepared entrees, frozen prepared dinners and frozen bakery products (Opposer's brief page 5). We find this argument unpersuasive for two reasons. First, in reviewing the numerous cardboard packages for opposer's various frozen prepared dinners and frozen prepared entrees attached as exhibits to the deposition of Mr. O'Ban, it is apparent that said frozen entrees and frozen dinners, after being heated, are entirely ready to be served in that they already contain numerous condiments. For example, exhibit 3.18--which is a carton for BEL-AIR frozen sliced turkey dinner--lists on the back panel in the ingredients statement the following condiments, among others: flavorings, vanilla, sugar, dried whey and tomato paste. This latter condiment is particularly instructive in that it is quite similar to both dried tomato spread and dried tomatoes, two of the condiments which comprise applicant's goods. In short, as a factual matter, the record does not support opposer's contention that as a general rule consumers add any condiments (other than perhaps salt and pepper) to what are essentially prepared dinners which already contain what opposer believes to be the appropriate condiments for proper flavor. Indeed, one of the primary purposes of a prepared dinner--namely, convenience--would be defeated if the consumer had to select, purchase, stock and add condiments to it (beyond salt and pepper) in order to make it appetizing.
*4 Second, even assuming arguendo that applicant's condiments might be used in connection with opposer's frozen prepared dinners and frozen prepared entrees, this does not mean that the goods are so closely related that the use of similar (but not identical) marks would result in confusion, mistake or deception. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) where the Court held that the use of RED ZINGER on herb tea and the use of ZINGERS on cakes would not be likely to cause confusion, mistake or deception. Tea and cake can be and often are consumed together. See also Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 228 USPQ 364 (Fed.Cir.1986) where the Court held that there was no confusion resulting from the use of ROMANBURGER for prepared sandwiches despite the long prior use of ROMAN MEAL and related marks for bread and hamburger buns. Again, bread or hamburger buns are an important part of a sandwich.
Based on the foregoing, this Board concludes that while both applicant's goods and opposer's goods are food items, they are essentially dissimilar. In view of this fact and the fact that the marks themselves are only somewhat similar in appearance, slightly similar in sound and essentially dissimilar in connotation, this Board finds that the use of BEL ARIA for the goods recited in the application is not likely to cause confusion, mistake or deception.
Decision: The opposition is dismissed.
J. D. Sams
L. E. Rooney
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 544,494 filed June 24, 1985 claiming first use in March 1985.
FN2. There appears to be confusion as to whether applicant's mark consists of one word (BELARIA) or two words (BEL ARIA). Applicant's drawing and specimens depict its mark in the somewhat stylized form shown below:
In its application, applicant referred to its mark as "BelAria." However, in their briefs, both the opposer and applicant depicted applicant's mark in solid capital letters as two words (i.e. BEL ARIA). Because both parties have referred to BEL ARIA as two words in their briefs, this Board will do likewise. In any event, under the facts presented on the record before us, our opinion would be the same regardless of whether applicant's mark is considered to be one word (BELARIA) or two words (BEL ARIA). As for opposer's mark BEL-AIR, some of opposer's registrations depict the mark in block letters while others depict the mark superimposed on a fanciful leaf design as shown below:
FN3. Opposer has established through the undisputed testimony of Mr. O'Ban that sales of frozen food products under its BEL-AIR mark were in excess of one hundred million dollars in each year from 1981 through 1985. Therefore, this Board has operated on the premise that opposer's goods bearing the mark BEL-AIR are known to a reasonably significant number of people.
FN4. Because opposer never argued that "bel air" and "bel aria" both meant "beautiful air," applicant (obviously) did not present a contrary argument.
FN5. Rand McNally The New International Atlas (1981) contains in its index eight separate listings for "Bel Air" (or variations thereof).