Lloyd's Food Products, Inc. v. Eli's, Inc.

• Decision Date: 03 March 1993
• Docket Number: No. 92-1386,92-1386
• Citation: 25 USPQ2d 2027,987 F.2d 766
• Parties: LLOYD'S FOOD PRODUCTS, INC., Appellant, v. ELI'S, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 766

987 F.2d 766

25 U.S.P.Q.2d 2027

LLOYD'S FOOD PRODUCTS, INC., Appellant, v. ELI'S, INC., Appellee.

No. 92-1386.

United States Court of Appeals, Federal Circuit.

March 3, 1993.

Robert V. Vickers, Body, Vickers & Daniels, Cleveland, OH, argued for appellant. With him on the brief was Thomas E. Young.

Robert J. Veal, Jennings, Carter, Thompson & Veal, of Birmingham, AL, argued for appellee.

Before MAYER, PLAGER and LOURIE, Circuit Judges.

MAYER, Circuit Judge.

Lloyd's Food Products, Inc. appeals the decision on summary judgment by the Patent and Trademark Office Trademark Trial and Appeal Board cancelling Registration No. 1,382,525. Cancellation No. 19,533 (April 3, 1992). The board cancelled Lloyd's Foods' registration based upon what it determined to be a likelihood of confusion between Lloyd's Foods' registered trademark for food products and the registration of a mark owned by Eli's, Inc. used in connection with restaurant services. We vacate and remand.

Background

In 1979, Eli's, Inc. obtained Registration No. 1,121,210 for the mark "Lloyd's" for use in connection with restaurant services. The registration was based on continuous prior use of the mark in connection with a single location, family style restaurant in Birmingham, Alabama, since at least 1937. Lloyd's Food Products, Inc. obtained Registration No. 1,382,525 in 1986 for the mark "Lloyd's" and design, for cooked pork with barbecue sauce, barbecued beef and pork ribs, cooked beef with barbecue sauce and barbecue sauce.

Eli's filed a petition in the United States Patent and Trademark Office to cancel Lloyd's Foods' registration alleging a likelihood of confusion based on Eli's prior use and registration of the mark. Lloyd's Foods filed a counterclaim for cancellation of Eli's registration based on abandonment, and a motion for summary judgment seeking dismissal of the cancellation proceeding based on the absence of a likelihood of confusion. Eli's filed a cross motion for summary judgment arguing that there was no issue of material fact and that a likelihood of confusion was established as a matter of law. The board determined that there was no genuine issue of fact for trial on likelihood of confusion, granted Eli's motion, and cancelled Lloyd's Foods' registration.

Discussion

The Commissioner of Trademarks may refuse to register a trademark that so resembles a previously registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive...." Lanham Act § 2(d), 15 U.S.C. § 1052(d) (1988). Likelihood of confusion is also grounds to cancel an existing registration upon petition by any person who believes that he is or will be damaged by the registration of a confusingly similar mark. See id. § 14, 15 U.S.C. § 1064 (1988). Likelihood of confusion between two marks is determined on a case-by-case basis, aided by application of the several factors set out in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The board's determination of whether there is a likelihood of confusion or not is reviewed by this court as a question of law based on underlying facts. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed.Cir.1984).

On a motion for summary judgment, the board must determine whether there is a genuine issue of material fact about likelihood of confusion. See 37 C.F.R. § 2.116(a) (1992). There is a genuine dispute when there is sufficient evidence for the fact finder to decide the question in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). The evidence must be viewed in a light favorable to the non-movant and all justifiable inferences are to be drawn in its favor. Id. at 255, 106 S.Ct. at 2513. This court reviews substantive and procedural aspects of the board's summary judgment decision de novo. Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1473 (Fed.Cir.1992).

The board had before it a limited record consisting of evidence provided by the parties in support of their respective motions. Lloyd's Foods submitted (1) the affidavit of Brian E. Turung, in which he testified to attached exhibits, which included a trademark search report and copies of yellow page and white page listings showing use of the "Lloyd's" mark; (2) a copy of the file histories of Registration Nos. 1,121,210 (Eli's) and 1,382,525 (Lloyd's Foods'); and (3) Eli's response to Lloyd's Foods' first set of interrogatories. In support of its motion, Eli's submitted (1) the affidavit of its president, Eli Stevens, relating his personal observations of alleged actual confusion, his knowledge of Eli's actions to protect its mark, and his opinion about the similarity of the products sold by the parties; (2) the affidavit of Eli's manager, Bogue Stevens, containing personal observations of alleged confusion by customers; and (3) the declarations of Ted and Michael Flach, relatives of the Stevens, about their observations of "Lloyd's" packaged products in a grocery store in Tampa, Florida, and in which Ted Flach stated he "wonder[ed] whether [the products were] connected in some way to the restaurant in Birmingham because the package contained barbecue products similar to those sold in the restaurant."

In concluding that a likelihood of confusion existed as a matter of law, the board erred in its treatment of the evidence in the record. One of the relevant factors in the likelihood of confusion examination is the "number and nature of similar marks in use on similar goods [or services]." In re E.I. Du Pont, 476 F.2d at 1361, 177 USPQ at 567. As for Lloyd's Foods' proffered evidence of third-party use, the board stated that "[w]hile [it] has considered this evidence, the evidence is entitled to little weight. It is well settled that search reports and telephone directories listing marks and entities containing the term are incompetent by themselves to prove that those marks and trade names are in use or that the public is exposed to them. See Fort Howard Paper Co. v. Kimberly-Clark Corp., 221 USPQ 732 (TTAB 1984); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983)." From this, it is apparent to us that notwithstanding what it said it was doing, for all intents and purposes the board ignored this evidence. It thus rejected Lloyd's Foods' contention that the mark was "weak" and entitled to a narrow range of protection.

The marks at issue in the cases relied upon by the board were used in conjunction with the sale of goods, not with the provision of services. A service mark is different from a mark for...