Community of Roquefort v. Santo
| Decision Date | 24 June 1971 |
| Docket Number | Patent Appeal No. 8415. |
| Parties | The COMMUNITY OF ROQUEFORT, Appellant, v. Joseph B. SANTO, dba the Sign of the Dove, Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Donald A. Hopper, New York City, for appellee.
Before RICH, ALMOND, BALDWIN, and LANE, Judges, and NEWMAN, Judge, United States Customs Court, sitting by designation.
This appeal, submitted on brief by both parties, is from the decision of the Trademark Trial and Appeal Board1 dismissing appellant's opposition to the registration by Joseph B. Santo, d/b/a The Sign of the Dove,2 of the following composite mark for salad dressing on the Principal Register:
Appellant, The Community of Roquefort, is a municipality organized under the municipal laws of the Republic of France. It predicated the opposition on ownership of the registered certification mark3 "ROQUEFORT" for cheese.4 Applied to the goods the mark certifies, in essence, that the cheese has been manufactured from sheep's milk only and has been cured in the caves of Roquefort, France by processes long used there.
The record for appellant includes a discovery deposition of the appellee Santo and depositions (testimony-in-chief) and rebuttal) of Frank O. Fredericks, an attorney for appellant and principal officer of Roquefort Association, a New York Corporation. A second deposition of Mr. Santo was taken later as testimony-in-chief in his behalf. Both parties submitted documentary exhibits.
The Roquefort Association, pursuant to authority vested in it by appellant has, since March 1950, licensed manufacturers throughout the United States to use designations including "ROQUEFORT CHEESE DRESSING" and "ROQUEFORT SALAD DRESSING" to identify their salad dressings which contain at least a specified amount of "ROQUEFORT" cheese.5 The Association has spent considerable sums of money over the years to stop what it considers improper uses of "ROQUEFORT" in association with cheeses and dressings, and to advertise and publicize "ROQUEFORT" cheese and salad dressing.
Appellee is president of a corporation which operates several restaurants in New York City, including one named "The Sign of the Dove." He originated the salad dressing used with the mark for which registration is sought. Appellee described that dressing as possessing some properties of "ROQUEFORT" dressing and Italian dressing, and stated that the word "ROQUITAL" in the mark was derived from the first four letters of the word "ROQUEFORT" and the first four letters of the word "Italian." The first shipment of salad dressing under the mark was made on February 17, 1964 on an order for one bottle from a purchaser in Missouri. During the same month and before filing the application for registration in March of the same year, appellee sold 17 other bottles of the dressing to certain food editors and friends who frequented his restaurant, the orders being received by mail and the dressing shipped by parcel post in bottles bearing labels displaying the mark as reproduced above. Appellee testified that difficulties he had with the shelf-life of the dressing caused him to destroy some bottles of the dressing which remained unsold at the end of February. Although appellee has not sold any more bottles in interstate commerce, he apparently sought help with regard to the shelf-life problem. He also referred advertising, development, marketing and distribution matters concerning the product to a public relations firm working with a company handling food products, but further efforts have been held in abeyance pending outcome of the opposition proceeding.
The label which appellee used on the bottles for his "SIGN OF THE DOVE ROQUITAL SALAD DRESSING" lists, inter alia, "Roquefort cheese" and "Cheese solids" as ingredients. The description of goods in his application, however, does not limit the salad dressing sold under the mark to salad dressing containing "ROQUEFORT" cheese and we have given no weight to the fact that the salad dressing which he has sold to date has contained "ROQUEFORT" cheese.
The board found the pleadings to raise two issues: "namely, whether or not applicant's appellee's mark is merely descriptive or misdescriptive of his salad dressing and whether or not applicant's appellee's mark resembles "ROQUEFORT" in a manner likely to cause confusion, mistake or deception."
On the issue of descriptiveness, the board observed that, while appellee's mark comprises several components, it is but a single unitary mark. The board then concluded that viewed in its entirety the mark "does not in any way describe" appellee's salad dressing.
The board treated the issue of misdescriptiveness with the question of likelihood of confusion. It considered "ROQUITAL" to be a prominent feature of the mark and acknowledged that it might be used by purchasers to identify appellee's salad dressing. The board further stated:
* * * "ROQUITAL", however, is readily distinguishable in sound and appearance from "ROQUEFORT", and it seems unlikely that any purchaser viewing applicant\'s mark in its setting would, because of the letters "ROQU", equate "ROQUITAL" with "ROQUEFORT". The most that can be said about "ROQUITAL" is that it may suggest to some purchasers the presence of "ROQUEFORT" cheese in applicant\'s salad dressing, and since the label lists "ROQUEFORT" cheese as an ingredient, and it has not been definitely established that this is not in fact the case, such suggestion is not improper. And inasmuch as applicant has not designated its product as a "ROQUEFORT CHEESE DRESSING", the fact that it contains less than 15% "ROQUEFORT" cheese and other cheese solids is of no moment. It is our opinion that as long as a person is free to purchase "ROQUEFORT" cheese on the open market without any restriction on use (we note that opposer\'s license agreements are on a voluntary and non-royalty basis), he is free to use as much as he wants of it in formulating a salad dressing for commercial sale so long as he does not misrepresent the contents thereof on the labels and/or sell it as a "ROQUEFORT CHEESE DRESSING" or under a mark confusingly similar to "ROQUEFORT". Applicant\'s activities under the mark in question have not come within any of these proscriptions, and hence the registration sought by applicant will not be in derogation of opposer\'s established rights in the registered mark "ROQUEFORT".
Appellant's brief has not convinced us of any reversible error in the board's dismissal of the...
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