866 F.2d 1386 (Fed. Cir. 1989), 88-1537, Keebler Co. v. Murray Bakery Products

Docket Nº:88-1537.
Citation:866 F.2d 1386
Party Name:9 U.S.P.Q.2d 1736 KEEBLER COMPANY, Appellant, v. MURRAY BAKERY PRODUCTS, Appellee.
Case Date:January 25, 1989
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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866 F.2d 1386 (Fed. Cir. 1989)

9 U.S.P.Q.2d 1736




No. 88-1537.

United States Court of Appeals, Federal Circuit

January 25, 1989

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Richard A. Zachar, Pope, Ballard, Shepard & Fowle, Ltd., Chicago, Ill., argued for appellant. With him on the brief was Joanne Spatz, Keebler Company, Elmhurst, Ill.

Laurence R. Hefter, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for appellee. With him on the brief was Saul Lefkowitz.

Before MARKEY, Chief Judge, and FRIEDMAN and SMITH, Circuit Judges.

MARKEY, Chief Judge.

Appeal from a decision of the Patent and Trademark Office Trademark Trial and Appeal Board (board) dismissing Opposition No. 76,365 of Keebler Company (Keebler), owner of Registration No. 648,660 on PECAN SANDIES for use on cookies, to registration of PECAN SHORTEES for use on cookies by Murray Bakery Products (Murray). We affirm.


In its Notice of Opposition, Keebler raised the sole issue of whether contemporaneous marketing of cookies under the marks PECAN SANDIES and PECAN SHORTEES is likely to cause confusion or mistake in relation to the source or sponsorship of the goods. In affirmative defense, Murray alleged that confusion was not likely because the overall marks are readily distinguishable in sound, appearance, and projected connotations, the only similarity being the presence of PECAN, a generic term incapable of creating a likelihood of confusion.

Murray moved for summary judgment, expressly admitting for purposes of the motion all of Keebler's allegations (except the allegation that confusion is likely). Murray thus admitted Keebler's prior and extensive use since 1956, Keebler's registration, similarity of the goods, similarity of trade channels, and sales to the same class of purchasers. Murray also moved for a stay of all other proceedings, including discovery. Under Trademark Rule 2.127(d), the board suspended all proceedings pending disposition of the summary judgment motion, thereby rendering moot Murray's motion to stay.

Keebler filed motions under Rule 56(f), Fed.R.Civ.P., for discovery and for a lifting of the stay to permit such discovery. In support of those motions, Keebler filed identical affidavits, each saying only this:

Answers to Opposer's pending requests for discovery, and possibly affidavits, depositions, or other discovery will be required to respond to Applicant's Motion for Summary Judgment. There is certain information regarding Applicant's use of its mark, channels of trade and other evidence necessary to prepare a response that is solely in the possession of the Applicant.

Citing the affidavit paragraph quoted above, the board denied Keebler's motions, saying:

It is the view of the Board, however, that opposer has failed to show that it is unable to present by affidavits facts essential to justify its opposition to the

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motion for summary judgment. (Emphasis in original).

In due course, the board granted summary judgment, stating:

Taking into account applicant's concessions of fact for purposes of its motion for summary judgment, we find there exists no genuine issue of material fact requiring trial in this case; we find, in addition, that applicant is entitled to judgment as a matter of law. While petitioner's ownership of a prior registration, the identity of the parties' goods and channels of trade, and petitioner's extensive use of its mark are all facts weighing on the side of a finding of likelihood of confusion, we find that the more important fact for resolving the issue of likelihood of confusion in...

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