Seabrook Foods, Inc. v. Bar-Well Foods Ltd.

RICH, Judge,

dissenting, with whom MARKEY, Chief Judge, joins.

With all due respect, I disagree with the opinion of the majority point by point. Applicant has inexcusably copied an inherently distinctive, origin-indicating feature of op-poser’s registered trademark which could only have been done for the purpose of creating purchaser confusion. This opposition should be sustained if only as a matter of promoting business morality. Ex post facto, the applicant-appellee has scrounged around in the field for excuses to justify its conduct and should not be given the encouragement of the unduly legalistic reasoning of the majority opinion, which focuses excessively on matters opposer might have proved but did not and substitutes legal technicalities for common sense. The principle elements of this case are in the category of res ipsa loquitur and did not have to be proved. They literally hit one in the eye, as they will hit purchasers.

This case involves off-the-shelf merchandise — frozen foods — presented to the general purchasing public in supermarkets and grocery stores, as relatively low-priced as foods can be these days, and purchased, as •everyone knows, to a large degree on the basis of package appearance as well as by the name of the producer or specific word marks.

A little more must be said about opposer’s mark, beside what appears in the majority opinion and in the reproduction of the registration drawing. The majority, while it makes a few comments about opposer’s use of the mark, fails to make clear that in its manner of use it is a principal feature of the frozen-food package design which is bound to impress itself on purchasers. Only an illustration of a typical package can make this clear. The reproduction below is of a cardboard package in the flat for frozen beef stew. It is printed in use in full colors and, as the registration indicates, the trademark design, which surrounds the entire package, is in two colors, alternately blue and green. Running around the entire box, as it does, the design is visible on all sides and the leaf motif is repeated on one end and on opposite sides of the main stem around the box. In real life, the colors make the design of the registered mark more prominent than the reproduction indicates. I have marked the colors of the segments with the letters “b” and “g” for blue and green.

*1347 [[Image here]]

*1348 Applicant, like opposer, depicts in its application one segment of its mark. Omitting the words and the bird, it is identical •with the design portion of opposer’s mark except for mention of color. The exhibits of applicant’s mark in evidence show its leaf motif design to be all blue and they also show that the way the mark is used in commerce is the same as opposer’s use, a repetitive, continuous vine-like pattern extending entirely around the package, displaced from an edge by about one-third of the width of the label and repeating the leaf motif on alternate sides of the main stem.

My first point of disagreement with the majority’s reasoning is that the mark of opposer is not inherently distinctive. I think the mark, particularly as used by opposer, 1 is inherently distinctive, and one has to do no more than contemplate one of opposer’s packages to come to that conclusion. It would be trite to say that a case can surely be found to support any such conclusion (or the contrary) and so I shall say only that opposer’s design is at least as distinctive as the designs held inherently distinctive in In re Swift & Co., 42 CCPA 1048, 223 F.2d 950 , 106 USPQ 286 (1955), and in Esso Standard Oil Co., 305 F.2d 495 , 49 CCPA 1351, 134 USPQ 402 (1962). It is certainly not common, or basic, or a mere refinement of a well-known form, and it certainly is unique, unusual, and capable of creating a commercial impression on its own. I cannot agree that it is “akin to the decorative panel” in the Brach case 2 relied on by the majority but distinguished in Esso, supra. It is not an “oval” design. It does not look like a stylized outline of a fish, which is what the third-party marks relied on mostly are. Because of the mark’s prominence, I can give no weight to the majority’s observation that it is never displayed alone. Neither was the polka dot design in Swift or the label design in Esso. Neither are many famous design marks; in fact, it is association with the word mark that connects it in the public mind with a specific origin so that the origin comes to mind upon seeing the design, even when different words are associated with it. That is opposer’s legitimate fear.

Accordingly, I conclude that the design portion of opposer’s mark is inherently distinctive in the field of frozen foods.

On the majority’s point 2, whether the design acquired a “secondary meaning,” I need say nothing since a mark that is inherently distinctive inherently has a “secondary meaning,” particularly after it has been used, as here, on a billion packages of frozen foods since 1965. Seabrook’s evidence of that sales volume was all it needed to produce. One does not need a consumer survey to establish the obvious. Secondary meaning need not be proved with respect to inherently distinctive marks. In re Esso, In re Brach, and In re Swift, all supra.

On the likelihood of confusion issue, I can agree wholeheartedly with the majority’s footnote 12 which points out the lack of any limitations on how the goods are sold and that they might well be in the same supermarkets, and even side by side, where purchasers would select them by looking at them (perhaps without their glasses). Since I disagree with the majority view that the mark of opposer lacks inherent distinctiveness in its design portion, I also disagree that the marks as a whole would not be likely to cause confusion. The TTAB had “no doubt” that applicant’s design “closely resembles the corresponding design portion of opposer’s * * * mark.”

I can give no weight at all to the evidence on the “copying issue” that Bar-Well did not copy. Such evidence, in the face of the other visual evidence, is simply incredible.

I would reverse with the comment that the TTAB perhaps gave improper weight to Bar-Well’s mode of marketing its food — the fact that 90% of its orders were received by telephone and by name is referred to in its opinion. The application, as the majority noted, is without limitation as to marketing *1349 methods. The goods being identical, it must be presumed that they travel in the same trade channels. I think too much weight was given to third parties’ conventionalized fish outlines on fish products, which are readily distinguishable even by undiscriminating grocery purchasers. Since the early Christians scribbled their fish symbols, 3 common folk have readily perceived the difference in appearance between fish and vines.

. Opposer is as much entitled to rely on its use as on its registration. 15 USC 1052(d).

. In re E. J. Brach & Sons, 256 F.2d 325 , 45 CCPA 998, 118 USPQ 308 (1958).

. See Encyclopedia Britannica (1942)—

FISH, * * *.

The fish was an early symbol of Christ in primitive and mediaeval Christian art. The origin is to be found in the initial letters of the names and titles of Jesus in Greek, Jesus Christ, Son of God, Saviour, which together spell the Greek word for “fish,” lx6us.