Giant Food, Inc. v. Nation's Foodservice, Inc.

Citation710 F.2d 1565,218 USPQ 390
Decision Date30 June 1983
Docket NumberNo. 82-613,82-613
PartiesGIANT FOOD, INC., Appellant, v. NATION'S FOODSERVICE, INC., Appellee. Appeal
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Alan S. Cooper, Washington, D.C., argued for appellant. With him on brief were William W. Beckett and Aaron L. Handleman, Washington, D.C., of counsel.

Dale Power, of San Pablo, Cal., argued for appellee. Melville Owen and Lora Thielbar, San Francisco, Cal., were on brief for appellee.

Before MILLER, Circuit Judge, SKELTON, Senior Circuit Judge, and SMITH, Circuit Judge.

SKELTON, Senior Circuit Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board (TTAB) of June 16, 1982, dismissing Opposition No. 60,397; 214 USPQ 614 (TTAB 1982). The appeal is taken pursuant to Sec. 21 of the Trademark Act of 1946, 15 U.S.C. Sec. 1071.

Appellee, Nation's Foodservice, Inc. (applicant), seeks to register the mark GIANT HAMBURGERS and Design, shown below, for "hamburger and hot dog sandwiches, milk shakes for consumption on or off premises" and restaurant services.

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Registration was opposed by appellant, Giant Food, Inc., (opposer), on the ground of likelihood of confusion between applicant's mark and opposer's marks in view of opposer's prior use and registration of the marks, GIANT FOOD, SUPER GIANT, GIANT FOOD and Design, and GIANT and Design for, inter alia, retail grocery and supermarket services and private label food products. 1 Opposer's two composite marks are shown below:

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NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The TTAB found that purchasers have come to associate opposer's mark with goods and services offered by opposer; that the services offered by the two parties were not totally unrelated; that although opposer's trade area is presently confined to the Washington, D.C.-Maryland-Virginia area, its exclusive right to use that mark in commerce for the goods and services specified in its registrations extends to all parts of the United States; and that the issue to be determined in the case was whether there was a likelihood of confusion between GIANT HAMBURGERS and Design on the one hand and GIANT, SUPER GIANT, GIANT and Design, and GIANT FOOD and Design on the other hand, for the respective goods and services of the parties. The TTAB concluded on this issue that, in the market in which applicant's products are sold, purchasers would construe the term GIANT HAMBURGERS as a size indicator, and thus would not confuse applicant's mark with opposer's mark. The TTAB also concluded that the overall differences in the presentation of the marks would prevent any likelihood of confusion. For the reasons given below, the decision of the TTAB must be reversed.

I

Opposer opened its first store in 1936 and has operated continuously since that time under the trade names and service marks GIANT and GIANT FOOD. Opposer has used these marks in various forms, including use in combination with the letter G, viz. G/GIANT and G/GIANT FOOD, under Registration Nos. 1,085,784 and 1,085,786, supra. These designs have served as marks for retail grocery supermarket and general merchandising store services, restaurant 2 and catering services, retail grocery supermarket, delicatessen, bakery, general merchandising, pharmacy and drug store services, and an extensive line of food and beverage products, including bread and bakery goods, meat, sandwiches, party platters, condiments, and soft drinks. The marks are also used in conjunction with the preparation and sale of a variety of ready-made food products, such as sandwiches and hot dogs in its delicatessen department, and "hot-to-go" chicken. In all, opposer uses these marks on over 400 categories of products. Its business is extensive in the area of Washington, D.C., Virginia and Maryland with approximately 120 food stores in operation there. It is well known by consumers in that region, having made sales in excess of one billion dollars in 1980. It and its products have received national publicity by being featured on the ABC television program "20/20". It has expended considerable amounts of money in advertising its marks and products through local media in the area where it does business. In short, purchasers in the area are familiar with opposer's service marks and have come to associate them with the goods and services provided by opposer.

Applicant's business was started as a sole proprietorship in 1952 under the name GIANT HAMBURGERS. It was incorporated later under its present name, Nation's Foodservice, Inc. However, its restaurants have always gone by the name GIANT HAMBURGERS. In 1959 applicant began to develop its own logo, and on November 21, 1962, it first used the mark shown above, consisting of a picture of a hamburger with the words GIANT HAMBURGERS appearing across the front of the hamburger, with a red and white striped banner for a background. The word GIANT is displayed more prominently than the word HAMBURGERS. Like opposer's marks, the word GIANT is written in capital letters. It is worth noting that the firm hired to design the mark was told by applicant that the word "GIANT" was the "key word" that had served to give identity to its restaurant.

Applicant filed to register this mark for hamburger and hot dog sandwiches, milk shakes for consumption on or off the premises, and for restaurant services. It operates restaurants through licensees under the subject mark. There are currently 15 such restaurants, all located in California, and these are engaged principally in "fast-food" operations. Applicant also operates a bakery which produces goods for sale in applicant's licensed restaurants. The opposed mark is used on store signs, menus, cups, bags, employee uniforms, courtesy cards, and newspaper advertisements. Even though presently located exclusively in California, there is evidence that applicant's restaurants have achieved some degree of notoriety in other parts of the country, due to their location in tourist areas in California.

At the hearing before the TTAB, there was certain evidence considered pertaining to third party usage, relied upon by applicant to demonstrate that the word GIANT was merely a size indicator. The exhibits and depositions of applicant's witnesses dealt with the use by other restaurants and markets of such advertisements as "BOB's GIANT BURGERS", "CONNIE'S GIANT 1/4 lb. BURGERS", "GINO'S GIANT" hamburgers, and "GIANT OPEN AIR MARKETS." The majority of these third-party usages were located in California. The TTAB relied upon these examples and on a dictionary definition in reaching the conclusion that the word "GIANT" is ordinarily used in its descriptive sense as a size indicator.

Applicant seeks a geographically unrestricted registration under which it might expand throughout the United States. Under these facts, it is not proper, as the TTAB found, to limit our consideration to the likelihood of confusion in the areas presently occupied by the parties. Section 7(b) of the Trademark Act of 1946, 15 U.S.C. Sec. 1057(b), creates a presumption that the registrant has the exclusive right to use its mark throughout the United States. Therefore, the geographical distance between the present locations of the respective businesses of the two parties has little relevance in this case. See, Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 77 (TTAB 1981).

II.

The issue we are faced with is whether the mark of applicant is so similar to the marks of opposer that, when applied to applicant's goods and services, it would create a likelihood of confusion in the minds of purchasers in the marketplace concerning source or origin. 15 U.S.C. Sec. 1052(d). In considering the question of likelihood of confusion, the only relevant application of the law to the facts is in the context of the marketplace, because that is where confusion of prospective purchasers would or would not occur. Burger Chef Systems, Inc. v. Sandwich Chef, Inc., 608 F.2d 875, 877 (Cust. & Pat.App.1979); Application of E.I. Du Pont De Nemours & Co., 476 F.2d 1357, 1360 (Cust. & Pat.App.1973). All evidence of record bearing on the question of likelihood of confusion must be considered in order to determine the circumstances surrounding the use of the mark. Burger Chef, supra at 877; Du Pont, supra at 1360-62. Du Pont sets forth a list of 13 evidentiary factors that must be considered, when of record, in testing for likelihood of confusion. Du Pont, supra at 1361.

Applicant makes the initial argument that the issue of likelihood of confusion is a question of fact, and, therefore, the TTAB's finding on that issue may not be overturned unless clearly erroneous. Some circuit courts hold that the question of likelihood of confusion is one of fact and is subject to the "clearly erroneous" standard of Fed.R.Civ.P. 52(a). Hindu Incense v. Meadows, 692 F.2d 1048 (6th Cir.1982); Purolator, Inc. v. Efra Distributors, Inc., 687 F.2d 554 (1st Cir.1982). However, other courts hold that it is a conclusion of law. Alpha Industries v. Alpha Steel, Etc., 616 F.2d 440 (9th Cir.1980); J.B. Williams Co., Inc. v. Le Conte Cosmetics, Inc., 523 F.2d 187 (9th Cir.1975), cert. denied, 424 U.S. 913, 96 S.Ct. 1110, 47 L.Ed.2d 317 (1976). Our predecessor court, the Court of Customs and Patent Appeals, recognized in Du Pont that the question of likelihood of confusion "has been termed a question of fact" by other courts, but did not specifically adopt that view. Du Pont, supra at 1361. It went on to say that "if labeled a mixed question or one of law, it is necessarily drawn from the probative facts in evidence." Id. Subsequently, in the case of Interstate Brands v. Celestial Seasonings, 576 F.2d 926 (Cust. & Pat.App.1978), Chief Judge Markey (who also wrote the opinion in Du Pont ) stated for the majority that the question of...

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