Olde Tyme Foods, Inc. v. Roundy's, Inc.

• Citation: 961 F.2d 200,22 USPQ2d 1542
• Parties: OLDE TYME FOODS, INC., Appellant, v. ROUNDY'S, INC., Appellee. 91-1226.
• Decision Date: 17 April 1992
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 200

961 F.2d 200

22 U.S.P.Q.2d 1542

OLDE TYME FOODS, INC., Appellant, v. ROUNDY'S, INC., Appellee.

91-1226.

United States Court of Appeals, Federal Circuit.

April 17, 1992.

Paul V. Storm, of Richards, Medlock & Andrews, Dallas, Tex., argued for appellant. With him on the brief were V. Bryan Medlock, Jr. and Charles S. Cotropia.

C. Thomas Sylke, of Whyte & Hirschboeck, Milwaukee, Wis., argued for appellee. With him on the brief was Kenneth R. Nowakowski.

Before NEWMAN, ARCHER and MICHEL, Circuit Judges.

MICHEL, Circuit Judge.

Olde Tyme Foods, Inc. ("OTF") appeals the United States Patent and Trademark Office Trademark Trial and Appeal Board's ("TTAB" or "Board") grant of summary judgment to Roundy's, Inc., resulting in cancellation of OTF's registration for the trademark YE OLDE TYME. Roundy's, Inc. v. Olde Tyme Foods, Inc., Cancellation No. 17,277 (Jan. 9, 1991). Because the Board erroneously drew factual inferences in favor of Roundy's, the summary judgment movant, we reverse and remand.

BACKGROUND

Roundy's is the owner of Registration No. 806,997, issued on April 12, 1966, and renewed on April 12, 1986, and Registration No. 942,886, issued on September 12, 1972, for the mark OLDE TYME for various foods including donuts, rolls, buns, bread, fruit pies, and ice cream. OTF was the owner of Registration No. 1,451,119, issued on August 4, 1987, for the challenged trademark YE OLDE TYME for On June 28, 1988, Roundy's petitioned the Board to cancel the registration for YE OLDE TYME on the basis that OTF's mark so resembled its mark OLD TIME as to be likely to cause confusion. Roundy's then moved for summary judgment and supported its motion with affidavits with attached exhibits containing discovery responses. After considering phonetic quality, appearance, connotation, and commercial impression, the Board found the marks to be similar. TTAB's Op. at 3. Since the registrations do not place restrictions on trade channels and classes of purchasers, the Board presumed that the goods reach all classes of purchasers through all customary trade channels. Id. at 4. The Board also found Roundy's mark "relatively strong and well known in the field," id., despite the evidence of third party use and registrations of similar marks for similar goods. Id. at 4-5. Finally, the Board discounted the significance of the lack of evidence of actual confusion during concurrent use of the marks. Id. at 5. In light of these findings and the close relationship among the goods sold, the Board concluded that OTF's mark created a likelihood of confusion and granted summary judgment in favor of Roundy's. Consequently, OTF's registration was cancelled.

mixes for cornbread, doughnuts, breads, frying batter, cakes, muffins, tortillas, and breading, and for cookies.

OTF appeals the grant of summary judgment. We have jurisdiction pursuant to 15 U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B) (1988).

DISCUSSION

The Federal Rules of Civil Procedure generally govern inter partes proceedings before the Board. 37 C.F.R. § 2.116(a) (1991). Thus, the Board may grant summary judgment to Roundy's "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c).

In order to establish that a factual dispute is genuine, the nonmoving party "need only present evidence from which a jury might return a verdict in [its] favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257, 106 S.Ct. 2505, 2514, 91 L.Ed.2d 202 (1986). That is, the Board must view the evidence in the light most favorable to the nonmovant. Since opposing factual inferences may arise from the same set of undisputed subsidiary facts, the Board must draw all reasonable inferences in favor of the nonmovant. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962) ("On summary judgment the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion."). Therefore, there need not be a conflict in the evidence of the underlying facts to preclude summary judgment.

Whether a genuine factual issue is material so as to preclude summary judgment would depend on applicable substantive law. Anderson, 477 U.S. at 248, 106 S.Ct. at 2510 ("Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.").

In In re E.I. DuPont DeNemours & Co., we delineated the mandatory factors to consider, when relevant evidence is of record, "[i]n testing for likelihood of confusion under Sec. 2(d)" of the Lanham Act. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). A determination of likelihood of confusion is the ultimate legal conclusion based on findings of fact for each pertinent DuPont factor considered together. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed.Cir.1983).

I.

Turning to the DuPont factors, we first consider "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." 476 F.2d at 1361, 177 USPQ at 567 (factor 1). While a mark is to be considered as a whole, "it is not error ... to indicate that some features of a mark are more distinctive than others." Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1565-66, 4 USPQ2d 1793, 1798 (Fed.Cir.1987) (citation omitted). The Board may "give greater force and effect to [a] dominant feature." Giant Food, 710 F.2d at 1570-71, 218 USPQ at 395 (citations omitted).

With respect to the marks' appearances, the Board did not view the evidence in a light most favorable to OTF, drawing all reasonable inferences in OTF's favor. The registrations are for OLD TIME and YE OLDE TYME, both typed in ordinary block letters. In reaching its finding that the marks are "substantially identical in appearance," the Board looked to actual displays of the words YE OLDE TYME, which deemphasize YE, rather than to the registration. TTAB's Op. at 3 n. 3. The Board also apparently discounted the significance of the differences in spelling. On the record before the Board, however, we cannot say that a reasonable fact finder could not find the marks' appearances dissimilar.

OTF does not dispute that OLD TIME and OLDE TYME are phonetically identical. However, OTF contends that the Board erred in discounting the YE portion of its mark. We disagree. Although YE is the first word in OTF's mark and has a distinctive sound, we must evaluate the mark in its entirety. DuPont, 476 F.2d at 1361, 177 USPQ at 567. And as a whole, OLDE TYME plainly dominates the phonetic quality of OTF's mark. A reasonable fact finder would find the marks to be phonetically similar.

Both before the Board and on appeal, OTF asserted that the marks have distinct connotations and commercial impressions. According to OTF, whereas YE OLDE TYME calls to mind old England, OLD TIME evokes images of a more generic earlier time. See TTAB's Op. at 3 n. 4; Brief for Appellant at 18-19. The Board rejected OTF's arguments because "these meanings would not be apparent to the average purchaser," TTAB's Op. at 3 n. 4., and found the marks "nearly identical in commercial impression." Id. at 3. Comparing the marks as though they reached the widest range of "average" purchasers of the goods possible under the registrations, however, we find that a reasonable fact finder could find the marks to convey different connotations and commercial impressions.

Viewing the undisputed evidence in a light most favorable to OTF and drawing all reasonable inferences in its favor, we conclude that the marks have not been shown as a matter of law to be similar in their entireties as to appearance, connotation, and commercial impression. The Board erred in drawing contrary inferences. In the context of its overall analysis of likelihood of confusion, we cannot say this error could not have affected the outcome and hence cannot overlook it as harmless error.

Because we are reviewing a grant of summary judgment, we do not engage in the delicate task of weighing the differences in appearance against the marks' properly found phonetic similarity. Yet phonetic similarity alone is insufficient in this case to establish as a matter of law that the uses of the respective marks are likely to cause confusion.

II.

OTF also objects to the Board's finding the OLD TIME mark "relatively strong." TTAB's Op. at 4. In particular, OTF faults the Board for considering its evidence of third party registrations and use of similar marks on similar goods only with respect to the ultimate issue of likelihood of confusion. Such evidence, OTF contends, is also probative of the strength of Roundy's' mark.

Under DuPont, "[t]he number and nature of similar marks in use on similar goods" is a factor that must be considered in determining likelihood of confusion. 476 F.2d at 1361, 177 USPQ at 567 (factor 6). Much of the undisputed record evidence relates to third party registrations, which admittedly are given little weight but which nevertheless are relevant when evaluating likelihood of confusion. As to strength of a mark, however, registration evidence may not be given any weight. AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973) ("The existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them....") (citations omitted). However, the record also contains evidence of actual use of similar marks for similar goods: OLD TYME for bread and OLD TYME for soft drinks. This evidence could reasonably support an inference that Roundy's mark is weak. On this record the Board's finding that Roundy's mark is "relatively strong" is...