Applicant filed fifteen applications to register various design marks containing the mark TOTAL for yogurt, among other products. Opposers asserted claims of likelihood of confusion and dilution based on its previously used and registered TOTAL mark for cereal. The Board found a likelihood of confusion between the parties’ marks and sustained the opposition with respect to all applications, except for one class of goods in one application covering non-yogurt products. Among other things, the Board concluded that Opposers’ TOTAL mark was famous; the similarities between the marks in their entireties outweighed the dissimilarities; cereal and yogurt were related goods, traveled in the same channels of trade, and were purchased by the same consumers; the goods were low-cost items such that consumers were more vulnerable to confusion; third-party use was either not relevant or minimal; and the lack of actual confusion was not highly probative. Because of its finding of likelihood of confusion, the Board did not reach Opposers’ dilution claim.
Applicant Fage Dairy Processing Industry S.A. filed fifteen applications to register various design marks containing the mark TOTAL for yogurt, among other products. Opposers General Mills, Inc. and General Mills IP Holdings II, LLC asserted claims that Applicant’s marks were likely to cause confusion with Opposers’ previously used and registered TOTAL marks, and that Applicant’s TOTAL marks diluted the distinctiveness of Opposers’ TOTAL marks. Opposers asserted registrations for the mark TOTAL in typed form for “wheat flakes” and “ready to eat breakfast cereal.” In its Answer, Applicant admitted that it did not use its marks in the United States prior to 1998.
The Board first addressed Opposers’ motions to strike certain testimony and evidence submitted by Applicant. Regarding emails that Applicant received from customers, the Board found that although they were not admissible under Notice of Reliance, because Applicant’s witness testified as to their existence and to his review of them, there was a sufficient indicia of reliability to accept them as being authenticated. The Board indicated, however, that they were not being considered for the truth of the matter asserted, but only for what they showed on their face. With respect to certain third-party reports and presentations that had been created for Opposers and produced by Opposers during discovery, the Board found that although they were not the type of documents contemplated for submission under Notice of Reliance, there had been ambiguity on this issue because of an email from Opposer suggesting that no authentication of these documents was necessary. Accordingly, the Board did not strike this evidence. The Board also admitted third-party evidence of use of the term “total” because it was introduced through testimony, but struck demonstrative exhibits created by counsel that constituted “summaries” of that evidence because they were not introduced through testimony. The Board also precluded Applicant from relying on testimony and exhibits reflecting advice of counsel because such evidence, if not privileged, should have been produced to Opposers during discovery, and not the day before the testimony deposition of Applicant’s witness.
Turning to the merits, the Board first found that Opposers’ TOTAL mark was a famous mark for ready-to-eat cereal based on Opposers’ registration of the mark dating back to 1961 (wheat flakes) and 1986 (ready-to-eat cereal), substantial sales and advertising figures, market share (TOTAL ranks among the top ten or fifteen of all cereal brands), exposure in the marketplace (TOTAL cereal is sold in “pretty much any store that’s selling grocer[ies]”), the very high number of U.S. households that purchase TOTAL cereal, the scope of Opposers’ advertising of TOTAL cereal (national television, radio, Internet, nationally distributed magazines and newspapers, coupons, and partnerships), Opposers’ use of public figures, such as Paul Harvey and Richard Lewis, to promote TOTAL cereal, Opposers’ partnership with the Food Network to feature TOTAL cereal on its programs, media mentions of TOTAL cereal, the nearly universal household penetration of advertising for TOTAL cereal, the high recognition of TOTAL cereal shown in internal consumer surveys, the high recognition of TOTAL cereal as shown by Opposers’ consumer survey conducted for the case, and Brandweek’s consistent recognition of TOTAL as one of the top 2000 “Superbrands” in the United States. The Board dismissed Applicant’s arguments that the TOTAL brand was in general decline based on its decreasing sales figures, finding that whatever the sales’ ebb and flow, the brand awareness had remained steady.
Regarding inherent distinctiveness, the Board recognized that TOTAL was a suggestive mark in that it suggests a significant feature of the product, namely, that it contains 100 percent of the daily recommended vitamins and minerals. The Board nevertheless found that the mark was entitled to a broad scope of protection because of the use of the mark for many years and the high level of exposure and recognition for several generations of American consumers. The Board also found that the evidence of record clearly established a close relationship between Opposers’ ready-to-eat cereal and Applicant’s yogurt, given consumers’ long-standing mixing of these types of products and the circumstances surrounding their marketing. Specifically, the Board concluded that yogurt and ready-toeat cereal are viewed and consumed as breakfast foods, yogurt and cereal compete for a share of consumers’ market baskets and breakfast tables, consumers mix and consume yogurt and cereal together, and consumers are regularly exposed to yogurt and cereal combined as a food product, both in the marketplace as a parfait and in the media in the form of information about eating options. The Board also recognized that Opposers, through their Yoplait Division, had a history of marketing and selling yogurt, including yogurt with grains mixed in; that Opposers cross-promoted their yogurt and cereal products; that Opposers offered cereal with “yogurt coated clusters”; and that Applicant had even marketed a product that combined cereal in yogurt outside the United States. Accordingly, the record supported the complementary and competitive relationship between cereal and yogurt, and the likely confusion resulting from the use of a famous cereal brand name on yogurt.
As to channels of trade and classes of purchasers, the Board presumed that the parties’ goods would be sold in all ordinary channels of trade for the goods. The Board noted that the parties’ goods were simple consumer food items that would be sold wherever groceries are sold, and the record established that cereal and yogurt are sold in the same stores, convenience stores, drugstores, and mega-stores. Accordingly, the channels of trade and purchasers overlapped. The Board further found that while cereal is usually in a center aisle and yogurt is in the refrigerated section of the perimeter of the store, there is increasing utilization of smaller refrigerated units and display bunkers where dairy products, including yogurt, are placed next to cereal. Further, Opposers promoted cereal in the dairy aisle and yogurt in the cereal aisle, and there was a strong overlap in the parties’ consumer base in the sector of the health-conscious consumer, which was reflected in both parties’ advertising. The record also showed that the goods involved were relatively inexpensive, and purchasers of such low-cost ordinary consumer items exercise less care in their purchasing decisions and were more likely to be confused as to the source of the goods.
In considering the similarity-of-the-marks factors, the Board divided Applicant’s fifteen applications into two groups—seven applications in which the word TOTAL was clearly the most prominent and memorable component of the mark, and eight other applications wherein the TOTAL portion was depicted in smaller font in the middle of the marks. For the first group, the Board found that the additional English wording on the marks was descriptive, the design elements comprised a simple background design that was suggestive of the ingredients of origin of the product, and the house mark FAGE appeared in Greek lettering in each of the marks, such that it was unlikely to be perceived by consumers as a mark. Further, the common element TOTAL evoked the same meaning of “complete nutrition” in Applicant’s and Opposers’ marks. The Board thus found that consumers would focus on the word TOTAL as the source-identifying element. For the second group, the Board found that the analysis was the same because, as compared to the descriptive wording and design elements, the word TOTAL continued to be dominant, despite its smaller size. Further, although the additional word FAGE (in Roman letters) was presented in larger typeface and emphasized by the banner design in these marks, the house mark did not dispel likely confusion because use of a house mark generally does not obviate confusion and the exceptions to this rule—(1) that the marks in their entireties convey significantly different commercial impressions, or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted—did not apply here. The Board found that a junior party’s fame cannot excuse likelihood of confusion and, in any event, the record did not show the level of fame needed to establish fame in the FAGE mark. Further, the Board distinguished this case from a situation where the common element of the marks is weak, noting its finding of the fame of Opposers’ TOTAL mark.
The Board also found that the vast majority of evidence of third-party use of the term TOTAL related to unrelated products, such that it was not sufficient to limit the scope of protection of the famous TOTAL mark. The Board dismissed Applicant’s arguments regarding the third-party use and registration by Bally Total Fitness of BALLY TOTAL FITNESS for, among other things, snack bars, yogurt-based beverages, grain-based foods, and frozen yogurt based on testimony that “Bally’s has never sold its product in grocery stores.” The Board also found that Applicant’s registration of the mark FAGE FETA TOTAL for cheese did not show that Opposers had abandoned TOTAL or even that they had acquiesced to such use. Additionally, the Board found that the significant time period for measuring the parties’ coexistence was three years, not twelve years, because the product’s sales had previously been limited to ethnic stores and stores that did not sell Opposers’ products. The Board found the “actual confusion” factor to be neutral based on this shorter period of time (three years) and the inherent difficulty in obtaining evidence of actual confusion, especially with inexpensive items.
In sum, the Board concluded that there was a likelihood of confusion between Opposers’ TOTAL marks and Applicant’s TOTAL marks, sustaining the opposition as to all but one class of goods in one application (covering non-yogurt products that the parties had not addressed at trial). Because of its finding on likelihood of confusion, the Board did not reach Opposers’ dilution claim.
Fame continues to play an important role in the Board’s likelihood-of-confusion analysis. Because Opposers’ TOTAL mark was found famous and the parties’ goods were found to be related, other potentially distinguishing features between the parties’ marks, such as the display of Applicant’s house mark, additional design elements, and other descriptive wording, were insufficient to avoid a likelihood of confusion.