Alt Legal Connect Session SummaryLive TTAB Hearing
Alt Legal Team | February 07, 2023
During this live TTAB hearing, the audience had the opportunity to view and observe an oral hearing for the opposition proceeding, Eden Foods, Inc. v. The Ethnic Group LLC dba Edenic Blends. During this hearing, both parties to this proceeding presented oral arguments.
By way of background, Michigan-based company Eden Foods, Inc. filed an opposition proceeding against The Ethnic Group LLC’s application for EDENIC BLENDS & Design as used in connection with vitamin and mineral supplements. Eden Foods is a leading producer of natural and organic products under a family of trademarks consisting in whole or part of the brand name EDEN. It began using its marks in the 1960’s and sells over 300 EDEN-related products throughout the United States. Eden Foods has a long history of protecting its marks before the USPTO and has filed several other TTAB proceedings, opposing other EDEN-related marks as used in connection with food and beverage goods/services and other related goods and services.
The Ethnic Group claims that there is no likelihood of confusion between its application for EDENIC BLENDS & Design and Eden Foods’ marks based on differences in design, sound, connotation and commercial impression, and the goods and services.
Present for the hearing were TTAB judges – Judge Lykos, Judge Hudis, and Judge Coggins. Eden Foods, Inc. was represented by Adrienne Kosak of Wiley Rein LLP and the Ethnic Group LLC dba Edenic Blends was represented by Rexford Brabson of T Rex Law PC.
Both parties were allowed 30 minutes to present their arguments and the opposer reserved 5 minutes for a rebuttal. Throughout each parties’ arguments, the judges jumped in with question to ask for further clarification, locate specific evidence within the record, or redirect the line of discussion.
Kosak asserted that her primary arguments are the strength of the EDEN family of marks, more than 50 years of use and more than 40 years of use with supplements, hundreds of millions of dollars of sales, and hundreds of thousands of followers with millions of unique website visits. Eden Foods products are typical products that consumers encounter in their average grocery store. She argued that the EDEN family of marks is very strong. With the mark EDENIC BLENDS, the unique portion is the term EDENIC, and while the logo is unique, precedent says that words have more source identifying significance. Kosak argued that there is a shared commercial impression and overlapping goods and services. Based on these factors, Kosak argued that the likelihood of confusion is clear. While the applicant claims there is a high level of thought put in to these purchases, Kosak argues that the applicant’s goods are sold for around $15. Additionally, the applicant claimed that there was no actual confusion, but Kosak argued that the sales figures were very low.
Judge Hudis asked how many enforcement actions from Eden Foods have gone through. Kosak indicated that this information was not part of the record. Judge Hudis proceeded to ask what the priority date is for supplements to which Kosak responded 1975. Judge Coggins confirmed that the filing date for the registration was in the 2000’s. Kosak confirmed that the declaration on the file contained the earliest date of the use of the supplements. Judge Hudis inquired about the absence of a survey to which Kosak responded that circumstantial evidence speaks for itself. This is a longstanding family of marks with millions of dollars in sales and therefore a survey was not necessary, and according to TTAB precedent, it is not necessary or relevant. Lastly, Judge Hudis asked why the applicant’s design is not relevant. Kosask responded that they do not argue that the design is not relevant, rather, the mark should be considered as a whole. Both applicant’s and opposer’s marks include plants and the designs which are not dissimilar, but case law comparing design to design or word mark to design isn’t applicable.
Brabson began by arguing that opposer’s rights are not absolute and there is no likelihood of confusion. He noted that the EDENIC BLENDS mark is highly stylized and goods differ and falls outside the scope of protection afforded to the opposer’s mark.
Judge Coggins asked how the marks and goods are different when we consider the EDEN marks in standard characters and the fact that the goods are identical. Brabson responded that in terms of the words, there is a difference in meaning between the words EDEN and EDENIC and also there is the addition of the word BLENDS, which is disclaimed, but must be considered. In terms of the goods, Brabson argues that there is a difference between applicant’s vitamin and mineral supplements and opposer’s dietary food supplements. When asked to clarify what is a dietary food supplement, Brabson explained it is dried seaweed and a concentrate fruit juice used to make tea and candy. Coggins asked if a dietary food supplement is vitamins and minerals. Brabson responded that these are all edible items, but a dietary food supplement is a type of food, not a specific type of vitamin and mineral that fulfils a specific purpose.
Brabson moved on to discuss the marks and designs. He asserted that the EDENIC BLENDS design is a large portion of the mark and words blend into the design. While opposer uses a plant in their design, the marks incorporate different plant types and geometric components. In terms of the meaning of the mark EDENIC is an adjective meaning idyllic whereas EDEN is a noun referring to the Garden of Eden. EDENIC is meant to refer to the blend and what the applicant is selling.
Judge Lykos asked what EDENIC means, aside from the dictionary definition and what testimony is contained in the record. Brabson confirmed that both parties made dictionary definitions of record. According to dictionary definition, Brabson claimed EDENIC is defined as “idyllic”, not “of the Garden of Eden.” Judge Lykos asked whether applicant testified as to why he selected this mark to which Brabson replied that applicant liked the commercial impression of the product being pure and idyllic.
Brabson argued that opposer asserts a family of word marks, but that the TTAB has never found that opposer owns a family of marks. Judge Coggins corrected Brabson that the TTAB has found a family of marks in at least two cases, but the judges will be looking at the record in this case. Brabson argued that EDENIC BLENDS does not fall squarely within the family of marks.
Brabson continued on to argue that the standard of consumer care is raised when it comes to health goods and health services. People specifically seek out healthy goods, particularly when it comes to applicant’s goods. Judge Coggins asked for evidence in the record to show that there is a heightened level of care or that consumers are more sophisticated. Brabson pointed to case law cited within the record. Brabson affirmed that the price of the goods is between $10-30 which raises the level of consumer sophistication.
Judge Hudis asked Brabson to defend his statement that the opposer’s marks are not strong. Brabson said that the marks are not arbitrary or fanciful, but certainly not descriptive. They should be afforded a normal scope of protection.
Brabson concluded that there is a distinction between the goods – applicant’s goods only covers vitamin and mineral supplements which is very narrow, as compared with opposer’s dietary food supplements and concentrates. Brabson argues that opposer generally focuses on food and snack items and the goods are not necessarily related just because they can be sold in the same store – this is not enough to find that the goods are related. Judge Hudis inquired as to whether opposer’s broader description swallows up applicant’s narrower description. Brabson replied no – the goods are distinct and applicant’s goods are not subsumed by opposer’s goods. When asked to distinguish the goods, Brabson indicated that opposer’s goods could contain vitamins and minerals but that consumers are specifically seeking out certain vitamins and minerals.
Kosak reiterated that there is no or minimal distinction between the goods. She noted that there is no caselaw to support that the goods are identical, but there is caselaw to support that the goods are highly related. Kosak argued that applicant’s products are not distinct. She noted that there is significant overlap, but even if the Board does not find significant overlap, the goods are highly related.
Kosak then went on to argue that “Edenic” does not mean “idyllic.” The only definitions of record were submitted by opposer and there is no specific definition of “Edenic” meaning “idyllic.” Even though there is the noun/adjective distinction, it’s not enough to create a difference in the mind of consumers. Consumers don’t actually believe goods are actually from the Garden of Eden.
She concluded “Edenic” does not mean “idyllic.” The terms have the same commercial impression, are used in connection with highly related or the same goods, and that Eden Foods owns a broad family of marks. Therefore, likelihood of confusion is high and the application must be refused.
- Very few TTAB proceedings make it to the point where there is an oral hearing. Many settle before or are determined on the written record.
- What is the advantage of an oral hearing? If your written record is complete and case is basic (likelihood of confusion or descriptiveness) you don’t necessarily need an oral hearing. However, an oral hearing can help where a case involves very technical goods to help judges understand the nature of the goods.
- Put your best arguments and evidence first and categorize it. Conflated arguments are hard to separate.
- Ensure all evidence is in the record.
- Know where all of your evidence is in the record, particularly when it comes to your strongest arguments.
- Definitely own up to your deficiencies – it makes your stronger points look weaker if you can’t own up to your deficiencies. Make sure you have answers at the ready – make your concessions and then explain “But, this is why there is a difference…”
- You don’t know what kinds of questions you’re going to get. Make sure you know your argument A to Z and keep in mind that the TTAB is limited to the 4 corners of the case. The hearing is meant for explanatory purposes, not for new evidence.
- If submitting printouts from TSDR, ensure that all fields are open and nothing is compressed before printing.
- All filings must be made electronically before the TTAB – check and see how things look when they are uploaded to ensure that everything was attached and is legible.
- Virtual oral arguments are likely here to stay – they were around before the pandemic. A virtual hearing can be preferable to avoid stress and expense of travel. An in-person hearing could be useful in very complicated cases where a visual aid is needed, but keep in mind that a judge may be virtual, so you will still need to make sure all evidence is in the record.
- Try not to get lost in your own answer, it can be difficult to recover. Judges will usually try to pull the participant back in. This can be very hard if the attorney has gone on a tangent!
- If an important case comes down mid-stream, it becomes part of the record.
- Viewers were surprised by how frequently the attorneys were interrupted with questions. One attendee suggested that it is usually a good sign to be interrupted by a judge. It means they are paying attention and are aware of the issues. You generally want to really focus in on a judge when they ask questions because they are usually doing it to: (1) clarify something they are hung up on; (2) educate/persuade their colleagues; or (3) get into record something that they think you missed.