Keebler Co. v. Murray Bakery Products

Citation866 F.2d 1386,9 USPQ2d 1736
Decision Date25 January 1989
Docket NumberNo. 88-1537,88-1537
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

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

motion for summary judgment. (Emphasis in original).

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 this case is the dissimilarity in commercial impression between the marks "PECAN SANDIES" and "PECAN SHORTEES."

While opposer is correct that both marks contain the word "PECAN" and both marks contain words that begin with an "s" sound and terminate in an "ees" sound, the marks are, nonetheless, readily distinguishable in appearance. More important, their principal point of similarity is the word "PECAN", which is, at least, merely descriptive of a principal ingredient of both parties' cookies.

* * *

* * *

What the case turns on, in our opinion, is the dissimilarity in appearance, pronunciation, and connotation of the words "SANDIES" and "SHORTEES". Opposer has offered nothing in response to the motion for summary judgment which raises a genuine issue of fact that these marks, in their entireties, convey similar commercial impressions. We find that they do not.

Having filed and then withdrawn a request for reconsideration, Keebler filed this appeal.


I. Whether the board abused its discretion in denying Keebler's motions for discovery.

II. Whether the board erred in granting Murray's motion for summary judgment.

I. Keebler's Motions

Keebler tells us that the board should not have denied its motions because, if it had granted them, Keebler might have been able to obtain evidence of Murray's intent in adopting its mark and any evidence of actual confusion in Murray's files. Having never said that in its affidavits to the board, Keebler faces the well-nigh insurmountable appellate burden of convincing this court that the board abused its discretion in not fathoming Keebler's mind. 1 See Avila v. Travelers Ins. Cos., 651 F.2d 658, 660 (9th Cir.1981).

Prescience is not a required characteristic of the board. Thus the board need not divine all possible afterthoughts of counsel that might be asserted for the first time on appeal. Though it filed a Notice of Opposition, a Response and Brief in Opposition to the Motion for Summary Judgment, a Response and Brief to Murray's Motion to Suspend Proceedings, two Rule 56(f) motions, and three affidavits, Keebler nowhere made the slightest reference to Murray's intent. We have found a single, passing reference to the words "actual confusion" in Keebler's brief opposing summary judgment, but none in the affidavits before the board in support of Keebler's Rule 56(f) discovery motions. In deciding those motions, the board is not required, as we are not in reviewing the board's decision, to visualize what more might have been said in the affidavits required by Rule 56(f).

We do not imply that a mere mention of intent and actual confusion in Keebler's affidavits would have rendered them adequate under Rule 56(f). In evaluating the present affidavits, we simply note at this point that Keebler does not, as it cannot, suggest a basis on which its Rule 56(f) affidavit language--"certain information"; "other evidence"--could have suggested to the board what Keebler now says it was after. The only identified targets of the discovery sought--Murray's use of its mark; channels of trade--had already been admitted by Murray and were not at issue. 2

In Keebler's brief opposing summary judgment, Keebler said it should be denied because of "the absence of relevant facts upon which Opposer may adequately base its response." Indeed, it is difficult to interpret Keebler's affidavit support for its discovery motions as saying anything more than, "we have no factual basis for opposing summary judgment, but, if you stay proceedings, we might find something."

Keebler professes difficulty in understanding the above-quoted reason given by the board for denying Keebler's motions, saying the board confused Rule 56(e) 3 with Rule 56(f). 4 The confusion, however, lies not with the board but with Keebler. Rule 56(e) requires an affiant to set forth admissable facts establishing a genuine issue of material fact requiring trial. Rule 56(f) requires an affiant to state reasons why he cannot present by affidavit facts essential to justify his opposition to the motion for summary judgment. Keebler's affidavits state no such reasons, as the board recognized in giving as its reason for denial a paraphrase of Rule 56(f). If all one had to do to obtain a grant of a Rule 56(f) motion were to allege possession by movant of "certain information" and "other evidence", every summary judgment decision would have to be delayed while the non-movant goes fishing in the movant's files.

As this court said in Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1566-67, 4 USPQ2d 1793, 1799 (Fed. Cir.1987):

Summary judgment need not be denied merely to satisfy a litigant's speculative hope of finding some evidence [through discovery] that might tend to support a complaint. [Citations omitted]. Further litigation in this case not only...

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