Opposer Yarnell Ice Cream’s Section 2(d) opposition melted away when the Board found this Applicant Outstanding Foods free of guilt in seeking to resister the mark FULL OF FLAVOR FREE OF GUILT for “vegetable based food products, namely, vegetable based snack foods; meat substitutes” [FULL OF FLAVOR disclaimed]. The Board ruled that Yarnell failed to prove a likelihood of confusion with the registered mark GUILT FREE for frozen confections.The Board’s 47-page decision was sprinkled with several interesting issues. Yarnell Ice Cream, LLC v. Outstanding Foods, Inc., Opposition No. 91244684 (March 7, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Trial by Consent: Yarnell submitted into evidence 15 additional registrations for GUILT FREE or various other products, including soft drinks and cookies, and it provided testimony that its mark is licensed for use for diverse food products. Applicant touched on these other registrations and uses in its briefing, but it objected to consideration of products other than Yarnell’s frozen confections.

The Board found that, although Applicant did not object to the submission of these unpleaded registrations, Yarnell had not fairly apprised Applicant that it would rely on these additional registrations.The Board therefore refused to consider them.

Goods and Trade Channels: Yarnell pointed to a single website showing vegetable-based snacks and frozen confections being sold under the same mark. However, there was “no testimony or evidence showing what sort of commercial impact these products have made.” Yarnell relied on the fact that the parties’ goods are “snacks,” but that was not enough to convince the Board that the involved goods are related.

As to channels of trade, the Board must presume that “both parties offer their vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products.” The Board found, however, that this factor “only weighs slightly” in Yarnell’s favor “because there is no evidence that the same consumers will encounter the products in the same marketing milieu (i.e., that they are sold in close proximity to one another).”

The Board did agree with Yarnell that the involved goods are low cost items that are purchased with less care than expensive products.

Strength of Opposer’s Mark: As to the inherent or conceptual strength of Yarnell’s mark, the Board found that “When Opposer uses GUILT FREE in connection with frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat.” Applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 Internet website “using marks that engender the ‘Guilt Free’ commercial impression.”

Although Yarnell licenses others to use the GUILT FREE mark, those uses are in a manner that is “unlikely to point to Applicant as the source of the products.” “Based on the commercial impression engendered by the term ‘Guilt Free’ and the third-party registrations and use of marks incorporating variations of the word ‘Guilt’ to engender the commercial impression of a food a person can eat without remorse, we find that Opposer’s mark GUILT FREE is suggestive.” [With regard to these third-party items, doesn’t Omaha Steaks require that the goods be related to Opposer’s goods? The Board just got through saying that snacks and frozen confections are not related, and then it essentially finds the opposite, since the third party goods include various snacks like popcorn, gummy candies, and potato chips – ed.].

As to commercial strength, the Board found that, in view of Yarnell’s evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark has “made little, if any, commercial impact.”

The Marks: The Board found that the marks at issue engender similar commercial impressions and sound alike [sound alike? – ed.], but there are obvious differences:

Applicant’s mark FULL OF FLAVOR FREE OF GUILT is more of an advertising tagline or slogan consisting of two terms, “Full of Flavor” followed by “Free of Guilt.” Applicant’s mark rolls off the tongue because of the alliteration of the letter “F” and the uniform, rhythmic structure and cadence of the two terms thereby distinguishing Applicant’s mark from Opposer’s mark when compared in their entireties.

Concluding that marks conveying a “guilt free” commercial impression in connection with food items should be accorded a narrow scope of protection, the Board found the marks sufficiently different to avoid confusion.

Conclusion: The Board dismissed the opposition.

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TTABlog comment: You may remember Yarnell from its recent failed attempt to overturn a trifusal of the mark SCOOP for frozen confections promoted and distributed by a mascot of that name. [TTABlogged here].

Text Copyright John L. Welch 2020.