The H.J. Heinz Co. lost its five-year fight to block the makers of the “Smart Balance” spread from registering the brand name as a trademark for frozen foods and snacks.
GFA Brands, Inc. filed two applications to register the mark SMART BALANCE for goods including frozen appetizers and entrees, snack bars, and other foods. GFA was the operating subsidiary of Smart Balance, Inc., which later changed its name to Boulder Brands, Inc.
ProMark Brands Inc., which had registered trademarks for SMART ONES for use with products including frozen entrees and frozen desserts, opposed the applications. Before trial, ProMark assigned its registered marks to Heinz.
Heinz argued that the SMART BALANCE mark so resembled SMART ONES as to be “likely to cause confusion, mistake or deception in violation of Trademark Act § 2(d), 15 U.S.C. § 1052(d).”
Heinz also contended that the SMART BALANCE mark was likely to “dilute the distinctiveness” of the “unique and famous” SMART ONES mark in violation of Trademark Act § 43(c), 15 U.S.C. § 1125(c).
The Trademark Trial and Appeal Board (TTAB) found that the parties’ goods were “closely related and, in several cases, legally identical.”
The TTAB also found that the two marks “enjoyed a seventeen-year history of peaceful co-existence in the U.S. marketplace”:
The parties’ respective products have been sold through the same grocery store chains, the same mass merchants such as Wal-Mart and Target, and the same club stores such as Costco and Sam’s Club, and their products have been advertised through the same forms of mass media, even appearing in some of the same retailer promotional circulars.
However, until recently, “the SMART ONES and SMART BALANCE products did not threaten to appear side by side in the frozen food case.”
Weak and Descriptive
The Board found that SMART was a “weak, descriptive term” commonly used to describe “a product that is low in calories, low in fat, soy-based, vegetarian, heart-healthy, nutrient-rich, high in fiber, or [that] otherwise contributes to a healthy lifestyle.”
The Board concluded that:
The weak trademark significance of the word “SMART” when used on food items deemed to promote a healthy lifestyle contributes less distinctiveness to the overall commercial impression of the parties’ respective marks than would an arbitrary or fanciful term. The second word in each of the parties’ marks combines with “SMART” to create markedly different visual and phonetic impressions, different connotations, and different overall commercial impressions… .
Given their differences visually and phonetically, the weakness of their shared term “SMART,” their different connotations, and their overall differing commercial impressions, we find that the parties’ marks are sufficiently dissimilar to weigh against a conclusion of likelihood of confusion.
How Strong is Your Mark?
This case illustrates the difficulties of protecting a trademark that uses “weak, descriptive” terms like “smart” as part of trademarks rather than “arbitrary or fanciful” terms such as “Apple” for computers, Pepsi, Kodak, Exxon, etc.