IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARI_l_.__.Z— ~——r—-x
`
`BOX TAB NO FEE
`
`KEEBLER COMPANY,
`
`Opposer,
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`v.
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`PARTNERS, A TASTEFUL CHOICE CO,
`
`Applicant.
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`\.-/\_./\._/\J\._/\_l‘u../\._/\_/
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`Opposition No. 91 152728
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`Opposition No. 91154926
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`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`AND MEMORANDUM IN SUPPORT THEREOF
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`Opposer, Keebler Company, hereby moves for summary judgment
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`in these
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`consolidated opposition proceedings denying applicant’s applications to register ALL-
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`AMERICAN COOKIES, Application SN 76/317807, and ALL-AMERICAN CRACKERS,
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`Application SN 76/318169, on the grounds that the marks are laudatory and descriptive and
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`without acquired distinctiveness.
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`Opposer also requests suspension of the proceedings (including the testimony
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`periods) pending the Board’s decision of this motion for summary judgment in accordance
`
`with 37 CFR 2.l27(d).
`
`In support of its Motion for Summary Judgment, Opposer submits an Appendix Of
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`Attachments To Opposer’s Motion For Summary Judgment, sections of which are hereafter
`
`cited as “App. § _.” Opposer relies on applicant’s interrogatory answers titled by applicant
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`“Opp0ser’s First Set Of Interrogatories To Applicant And Answers Thereto” (hereafter
`
`“Applicant’s Interrogatory Answers”) (App. § A); applicant’s supplemental interrogatory
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`answers titled by applicant “Opposer’s First Set Of Interrogatories To Applicant And
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`lllllllIllllllllllllllllllllllllllllIlllllllllll
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`09-03-2004
`U.S. Patlhtl TMOTGITM Mall FICDI D1. #22
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`
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARI_l_.__.Z— ~——r—-x
`
`BOX TAB NO FEE
`
`KEEBLER COMPANY,
`
`Opposer,
`
`v.
`
`PARTNERS, A TASTEFUL CHOICE CO,
`
`Applicant.
`
`\.-/\_./\._/\J\._/\_l‘u../\._/\_/
`
`Opposition No. 91 152728
`
`Opposition No. 91154926
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`AND MEMORANDUM IN SUPPORT THEREOF
`
`Opposer, Keebler Company, hereby moves for summary judgment
`
`in these
`
`consolidated opposition proceedings denying applicant’s applications to register ALL-
`
`AMERICAN COOKIES, Application SN 76/317807, and ALL-AMERICAN CRACKERS,
`
`Application SN 76/318169, on the grounds that the marks are laudatory and descriptive and
`
`without acquired distinctiveness.
`
`Opposer also requests suspension of the proceedings (including the testimony
`
`periods) pending the Board’s decision of this motion for summary judgment in accordance
`
`with 37 CFR 2.l27(d).
`
`In support of its Motion for Summary Judgment, Opposer submits an Appendix Of
`
`Attachments To Opposer’s Motion For Summary Judgment, sections of which are hereafter
`
`cited as “App. § _.” Opposer relies on applicant’s interrogatory answers titled by applicant
`
`“Opp0ser’s First Set Of Interrogatories To Applicant And Answers Thereto” (hereafter
`
`“Applicant’s Interrogatory Answers”) (App. § A); applicant’s supplemental interrogatory
`
`answers titled by applicant “Opposer’s First Set Of Interrogatories To Applicant And
`
`lllllllIllllllllllllllllllllllllllllIlllllllllll
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`09-03-2004
`U.S. Patlhtl TMOTGITM Mall FICDI D1. #22
`
`
`
`
`
`
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`Supplemental Answers Thereto” (hereafter “Applicant’s Supplemental
`
`Interrogatory
`
`Answers”) (App. § B); Opposer’s First Request For Admissions (App. § E) and Applicant’s
`
`Amended Substitute Responses To Opposer’s First Request For Admission (App. § F)
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`(hereafier “Adm. To Req.”); copies of applicant’s packaging and promotional materials
`
`provided in response to opp0ser’s document requests, submitted herewith together with a
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`copy of opposer’s document requests (App. §§ C and D); and dictionary definitions of ALL—
`
`AMERICAN (App. § K). Opposer also submits the following declarations:
`
`the Declaration
`
`Of Carolyn Burns (App. § G) regarding the use of ALL-AMERICAN by opposer and its
`
`parent; the Declaration Of Jo Osborn (App. § H) regarding The Pasta Shoppe’s use of ALL-
`
`AMERICAN in connection with cookies; the Declaration Of Mary Winch authenticating
`
`printouts from Internet websites and attaching publications showing widespread use of
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`ALL-AMERICAN in connection with food products, including cookies and crackers (App.
`
`§ J); and the Declaration Of Patricia S. Smart (App. § I) authenticating printouts from
`
`applicant’s website.
`
`1.
`
`STATEMENT
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`The above proceeding involves consolidated oppositions, an opposition to
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`applicant’s application to register ALL-AMERICAN COOKIES, with the word “cookies”
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`disclaimed, for cookies, App. SN 76/317807, and an opposition to its application to register
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`ALL-AMERICAN CRACKERS, with the word “crackers” disclaimed for crackers, App.
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`SN 76/318169.
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`The Notice Of Opposition to SN 76/317807 alleges that opposer has been engaged
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`in the sale of a wide variety of cookies for many years, that applicant seeks to register the
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`mark ALL-AMERICAN COOKIES for cookies,
`
`that
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`the term ALL-AMERICAN
`
`
`
`
`
`
`
`COOKIES is laudatory or descriptive and is without acquired distinctiveness and incapable
`
`of distinguishing applicant’s cookies from those of others, and that registration of the mark
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`would interfere with opposer’s right to describe its products as All-American and would be
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`damaging to opposer. The Notice Of Opposition to SN 76/318169 contains the same
`
`allegations, but with respect to crackers rather than cookies, 1‘. e., opposer’s sale of a wide
`
`variety of crackers, applicant’s attempt to register ALL-AMERICAN CRACKERS for
`
`crackers, and the laudatory or descriptive nature of the term as applied to crackers.
`
`Applicant’s Answers deny the allegations of the Notices of Opposition, other than
`
`the allegations regarding applicant’s filing of applications to register ALL-AMERICAN
`
`COOKIES and ALL-AMERICAN CRACKERS.
`
`II.
`
`FACTS
`
`A.
`
`The Term “All-American”
`
`The meaning of the term “All—American” is well-known. As set forth in
`
`Webster’s New Collegiate Dictionary (1980), all-American is defined as:
`
`1: composed wholly of American elements 2: representative of the ideals
`of the U.S. <an ~ boy> 3 a: selected (as by a poll of journalists) as one of
`the best in the U.S.
`in a particular category at a particular time <an ~
`quarterback> b: made up of all-American participants <an ~ basketball
`team> 4: of or relating to the American nations as a group
`
`App. § K.
`
`The term is defined in The Penguin Webster Handy College Dictionary (2003),
`
`App. § K, as:
`
`nay‘. 1, the best or one of the best in the U.S. 2, composed wholly of
`Americans. 3, typically American. —n. an all—American person, esp. in
`sports.
`
`It is defined in Webster’s New Explorer Dictionary and Thesaurus (1999) as:
`
`_1=u5.v-.; ‘
`
`
`
`
`
`crab‘. 1: selected as the best in the U.S. 2: composed wholly of American
`elements 3: typical of the U.S. -—- all-American n
`
`App. § K. And “A11-American” is defined in Webster’s New Encyclopedic Dictionary
`
`(2002), App. § K, as:
`
`lacfiective (1888) la also all»America: selected (as by a poll ofjournalists)
`as one of the best in the U.S. in a particular category at a particular time
`<an ~ quarterback> b: having only all-American participants <an ~
`basketball
`tearn> 2:
`composed wholly of American elements
`3:
`representative or typical of the U.S. or its ideals <an ~ boy> <her ~
`optimism> 4: of or relating to the American nations as a group 2 noun
`(1920): on (as an athlete) that is voted all-American
`
`Because of its laudatory meaning, e. g., “representative or typical of the U.S. or its
`
`ideals” and “one of the best in the U.S.,” “All-American” has been commonly used to
`
`describe and promote various food products, including cookies and crackers.
`
`B.
`
`0pposer’s Use Of All-American
`
`Opposer for many years has been engaged in the manufacture and sale of food
`
`products, including cookies and crackers. App. § G, Bums Decl. 1] 2. Over the years,
`
`opposer has used the term ALL-AMERICAN in connection with its promotion and sale
`
`of products. App. § G, Burns Decl. 1] 3.
`
`For example, beginning at least as early as 1996, opposer used “All-American
`
`Cookies” and “All-American Chocolate Chip Cookies” on its packages of cookies and
`
`animal crackers sold under its SUNSHINE brand. App. § G, Burns Decl. W 4-9, Exhs.
`
`A, B, C, D. This nationwide use of All-American to tout opposer’s products was
`
`prominent in the late l990’s, as over $22,000,000 in wholesale sales were made by
`
`opposer of cookies in packages bearing the laudatory All-American term, with over
`
`1,600,000 cases, each containing 6 or 12 packages of cookies, being sold. App. § G,
`
`Burns Decl.1[ 10.
`
`
`
`
`
`Keebler also has used the term ALL-AMERICAN in promotional materials. For
`
`example, one of the recipes currently posted on Keebler’s website is a recipe for an “All-
`
`American Sundae.” App. § G, Bums Decl. 1] ll, Exh. E.
`
`Keebler’s parent, Kellogg Company, also presents recipes on its website. The
`
`recipes currently posted on its site include recipes for “All American Apples 'N Cream
`
`Pie” and “All-American Party Pudding.” App. § G, Burns Decl. 1] 12, Exhs. F, G.
`
`C.
`
`Third Party Use Of ALL-AMERICAN
`
`Many other producers of foods, including cookies and crackers, also have used
`
`“All-American” in a laudatory or descriptive manner in connection with the promotion
`
`and sale of their products.
`
`“All-American” is used to tout food products or related
`
`services and to show solidarity with America in the post-9/1 1 era.
`
`Copies of Internet pages showing the widespread descriptive use of All-American
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`were attached as exhibits to Opposer’s Requests To Admit served in August 2003.
`
`Following the Board’s decision requiring applicant to respond, applicant responded in
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`July 2004 and acknowledged third party sale of food products described as ‘‘All-
`
`American.” Additional third parties were subsequently identified and printouts or copies
`
`of materials relating thereto are submitted with the Declaration Of Mary Winch, App. § J.
`
`The Pasta Shoppe has sold “Designer CookiesTM” for years. App. § H, Osborn
`
`Decl. 1] 2, Exh A; App. § E, Req. Nos. 1-3, K0005-K0007; App. 5} F, Adm. To Req. Nos.
`
`1-3.
`
`Its Designer Cookies include ones which are described as “All American Cookies”
`
`and packaged in patriotic packaging.
`
`Id. The cookies are promoted on the company’s
`
`website, pastashoppe.com, and third party sites.
`
`Id; App. § J, Winch Decl. 111] 56-57,
`
`K0185. Applicant has acknowledged its awareness of The Pasta Shoppe’s use of All-
`
`American Cookies. App. § A, Applicant’s Interrogatory Answers, Nos. 9 and 10.
`
`
`
`
`
`
`
`Parmalat also has promoted its CIRCUS ANIMAL animal crackers as ALL-
`
`AMERICAN, by using the designation ALL-AMERICAN on its product packaging,
`
`together with patriotic-themed packaging. App. § A, Applicant’s Interrogatory Answers,
`
`Nos. 9 and 10; App. § C, Req. No. 15; App. § D, Production Nos. PART049-PART051.
`
`This use also was acknowledged by applicant in response to the discovery requests. Id.
`
`Chris’s Cookies also sells an “All American” Cookie Assortment. App. § J,
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`Winch Decl. 111 58-60, K0186-K0191. Press releases regarding the sale of these cookies
`
`were issued as early as May 2000. Id.
`
`Kids Cooking Club offers for sale an “All American Cookie Kit” at the web site
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`kidscook.com. App. § E, Req. Nos. 7-8, K0010; App. § F, Adm. To Req. Nos. 7-8; App.
`
`§ J, Winch Decl. 1] 27, K0131. The “All-American Cookie Kit” also is promoted and
`
`offered for sale at the acumenps.com web site. App. § J, Winch Decl. 111] 38-39, K0153.
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`“All-American Chocolate Chip Cookies” are sold by Bonjour Basket, Inc. at the
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`website bonjourbasket.com. App. § J, Winch Decl. 1]1] 3-4, K0008-K0009. Bonjour
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`promotes its cookies as follows:
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`“Celebrate America with our classic chocolate chip
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`cookies. This one proud gift tin is chock-full of traditional all-American treats.” Id.
`
`Pleasantville Cookie Company offered “All American Peanutbutter Cookies” for
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`sale. App. § J, Winch Decl. 111] 11-12, K0073—76.
`
`The kitchenkraftscom web site offers “All-American Cookie Base” for sale.
`
`App. § J, Winch Decl., 111] 36-37, K0151-152.
`
`The carolinacookiecom web site offers a “gourmet” cookie assortment for sale,
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`describing it as an “All American tin for an All American Cookie.” App. § J, Winch
`
`Decl. 111] 13-14, K00077~—78.
`
`
`
`
`
`Chip-N-Dough offered for sale a gift basket of cookies at the chipndough.com
`
`web site, stating “This all-American gift basket is packed with our All-American classics!
`
`Three cheers for Chip-N-Dough’s award winning cookies.” App. § E, Req. Nos. 73-74,
`
`K0079-80; App. § F, Adm To. Req. Nos. 73-74.
`
`Another gift basket of food products which includes cookies and crackers,
`
`is
`
`touted as an “All American Gift Basket” at the search.store.yahoo.com website. App. § J,
`
`Winch Decl. 111] 15-16, K0081—82.
`
`Similarly, the giftbasketfevercom web site offers for sale an All American gift
`
`basket, filled with crackers, cookies and other food products. App. § J, Winch Decl. 111]
`
`17-18, K0083-90.
`
`The walmart.com web site offers for sale an “All-American Basket” filled with
`
`crackers and other food products. App. § J, Winch Decl. 111] 19-20, KO096—97.
`
`An “All-American Military Care Package,” which includes “All American
`
`sugar/shortbread cookies,” is offered for sale at the yougota.com web site. App. § J,
`
`Winch Decl. 1[1] 21-22, K0098-99.
`
`Another gift basket which includes cookies is promoted at the gothambasketscom
`
`web site as All American basket. App. § E, Req. Nos. 88-89, K0100—l01; App. § F,
`
`Adm. To Req. Nos. 88-89.
`
`The American Freedom gift basket for sale at the greatarrivals.com web site is
`
`described at the site as follows: “The patriotic basket filled with all American snacks
`
`including cheese, crackers, chips and cookies is enough to make any one sing the national
`
`anthem!” App. § J, Winch Decl. 111123-24, K0102-104.
`
`
`
`
`
`Swiss Colony offers
`
`an “All-American Cookie Quartet”
`
`for
`
`sale
`
`at
`
`swisscolony.com. App. § J, Winch Decl. 111] 30-31, K0142-143.
`
`An “All-American Cookie Basket” is promoted as being “packed with our All-
`
`American award winning cookies!” and is offered for sale at the adorablegiftbasketscom
`
`web site. App. § J, Winch Decl. 111] 32-33, K0144-146. Baskets are offered with “56
`
`large All-American cookies,” “42 large All-American cookies,” and “I6 large All-
`
`American cookies.”
`
`The website www.findgift.com.
`
`identifies several All American Gift Baskets
`
`which are for sale; one from Munchie Gifts, K0094, another from Gift Sender Central,
`
`and a third from Discover New Foods. App. § E, Req. Nos. 79-80, K0091-93; App. § F,
`
`Adm. To Req. Nos. 79-80.
`
`Biz Rate Shopping Search, www.bizrate.com., also identifies a number of All
`
`American Gift Baskets available for sale, namely, (i) an All American Gourmet Food
`
`Gift Basket from Backroads America, (ii) an All American Delights Gift Basket from
`
`overstock.com. and (iii) a USA All The Way! Gift Basket, described as an “All American
`
`Gift Basket” from Grandma’s Gift Baskets. App. § J, Winch Decl. 1] 61, K0192-195.
`
`The same website offers All-American Food Kits Funnel Cake Making Refill from
`
`Cooking.com, an All American Favorite tin from Distinct Deliveries, and All-American
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`Bouquet from Distinct Deliveries. Id.
`
`The term “All-American” also is commonly used in the title of recipe books to
`
`tout their products. For example, The All-American Cookie Book was published in 2001.
`
`In the book, the author, Nancy Baggett, describes her travels throughout the U.S. to
`
`“come up with the best versions of our national favorites,” which she refers to as the
`
`
`
`
`
`“best-of-the best” cookies. App. § E, Req. Nos. 9-10, K0011-16; App. § F, Adm. To
`
`Req. Nos. 9-10; App. § J, Winch Decl. 1] 28, K0132a-K0l32e. See K001]-12.
`
`“All-
`
`American” in the book title thus serves as a laudatory description of the cookies whose
`
`recipes she included in the book. Id
`
`Other recipe books using the term “All-American” in their title include:
`
`- Heartland Baking: All-American Cakes, Cookies, Pies, Pastries,
`Breads, and Bars, App. § E, Req. Nos. 13-14, K0021-24; App. § F,
`Adm. To Req. Nos. 13-14;
`
`-
`
`The All-American Cowboy Cookbook: Home Cooking On The Range,
`App. § E, Req. Nos. 15-16, K0025-26; App. § F, Adm. To Req. Nos.
`15-16;
`
`- All-American Low-Fat and No-Fat Meals in Minutes: 300 Delicious
`Recipes and Menus For Special Occasions or Every Day - In 30
`Minutes Or Less, which notes on its cover “Get Weekly All-American
`Menus” and directs readers to its website, App. § E, Req. Nos. 17-18,
`K0027-28; App. § F, Adm. To Req. Nos. I7-18;
`
`-
`
`365 All American Favorites, App. § E, Req. Nos. 19-20, K0029-30;
`App. § F, Adm. To Req. Nos. 19-20;
`
`- Month of Meals: All-American Fare, App. § E, Req. Nos. 23-24,
`K0033-34; App. § F, Adm. To Req. Nos. 23-24;
`
`-
`
`The All American Cheese and Wine Book: Pairing, Profiles and
`Recipes, App. § E, Req. Nos. 25-26, K0035-36; App. § F, Adm. To
`Req. Nos. 25-26;
`
`- Crazy for Casseroles: 275 All-American Hot-Dish Classics, App. § E,
`Req. Nos. 27-28, K0037-38; App. § F, Adm. To Req. Nos. 27-28;
`
`- All-American Desserts.‘ 400 Star-Spangled, Razzle-Dazzle Recipes for
`America ‘s Best Loved Desserts, App. § E, Req. Nos. 29-30, K0039;
`App. § F, Adm. To Req. Nos. 29-30;
`
`- All American Cooking, App. § E, Req. Nos. 31-32, K0040-41; App. §
`F, Adm. To Req. Nos. 31-32;
`
`- All American Cookbook, App. § E, Req. Nos. 33-34, K0042; App. § F,
`Adm. To Req. Nos. 33-34;
`
`
`
`
`
`Prevention ’s Quick and Healthy Low-Fat Cooking: Featuring All-
`American Food, Vol. 1, App. § E, Req. Nos. 35-36, K0043-44; App. §
`F, Adm. To Req. Nos. 35-36;
`
`All-American Comfort Food: Recipes for the Great-Tasting Food
`Everyone Loves, App. § E, Req. Nos. 37-38, K0045-46; App. § F,
`Adm. To Req. Nos. 37-38;
`
`The All-American Truck Stop Cookbook — Good Eats From The Road,
`App. § J, Winch Decl. fl] 66, K0202a-K0202d;
`
`Weight Watchers® - Simply The Best — All American — Over 250
`Regional Favorites From Around The Country, App. § J, Winch Decl.
`1] 63, K0199a-K0l99d;
`
`The All-American Bean Book, App. § J, Winch Decl. 1] 69, K0206a-
`K0206d.
`
`“All-American” also is frequently included in the titles of individual recipes,
`
`many of which have been posted on Internet sites. Applicant admitted the existence of a
`
`number of these in response to opposer’s Requests To Admit; additional recipes also
`
`have been submitted as exhibits to the Winch Declaration. App. § J. These include
`
`recipes for both cookies and other foods, namely:
`
`at
`cookies
`Christmas
`Cherries”
`Chocolate
`“All-American
`webterrace.com and “All-American Chocolate Chip Cookies” at
`floras-hideout.com web sites, respectively, App. §J, Winch Decl. 111]
`34-35, 40-41, K0147-150, K0154-158;
`
`“Bite-Size All-American Peanut Butter Cookies” from the book
`Cindy ’s Itty Bitty Baking Book (1995), App. § E, Req. Nos. 39-40,
`K0047-48, App. § F, Adm. To Req. Nos. 39-40;
`
`“All-American Chocolate Chip Cookies” at recipesource.com, App. §
`E, Req. Nos. 41-42, K0049, App. § F, Adm. To Req. Nos. 41-42;
`
`“All American Oatmeal and Peanut Butter Cookies” at vegan—food.net,
`App. § E, Req. Nos. 45-46, K0051-52, App. § F, Adm. To Req. Nos.
`45-46;
`
`“All-American Chocolate Chip Cookies” at
`Winch Decl. 1111 5-6, K0053-54;
`
`ichef.com, App.
`
`§ J,
`
`
`
`
`
`“All-American Chocolate Chip Cookies” at cooks.com, App. § E, Req.
`Nos. 49-50, K0055-57, App. § F, Adm. To Req. Nos. 49-50.
`
`All American Dessert, at recipelandcom, App. § E, Req. Nos. 51-52,
`K0058-59, App. § F, Adm. To Req. Nos. 51-52;
`
`All-American Chocolate Cake, at recipelandcom, App. § E, Req. Nos.
`53-54, K0060-61, App. § F, Adm. To Req. Nos. 53-54;
`
`All-American Chocolate Chip Cookies at Just Chocolate Recipe
`website, App. § E, Req. Nos. 43-44, K0050, App. § F, Adm. To Req.
`Nos. 43-44;
`
`All-American Meat Loaf at recipe1and.com, App. § E, Req. Nos. 55-
`56, K0062-63, App. § F, Adm. To Req. Nos. 55-56;
`
`All American Barbecued Beans, at recipeland.com, App. § E, Req.
`Nos. 57-58, K0064-65, App. § F, Adm. To Req. Nos. 57-58;
`
`All-American Chocolate Chip Cookies, at recipesourcecom, App. £3‘ E,
`Req. Nos. 41-42, K0049, App. § F, Adm. To Req. Nos. 41-42;
`
`All American Chicken and Vegetable Dinner, at recipeIand.com, App.
`§ E, Req. Nos. 59-60, K0066-67, App. § F, Adm. To Req. Nos. 59-60;
`
`All-American Meatloaf, at YumYum.com, App. § E, Req. Nos. 61-62,
`K0068, App. § F, Adm. To Req. Nos. 61-62;
`
`All American Hot Dish, at YumYum.com, App. § E, Req. Nos. 63-64,
`K0069, App. § F, Adm. To Req. Nos. 63-64;
`
`All-American Chocolate Cake, at YumYum.com, App. § E, Req. Nos.
`65-66, K0070, App. § F, Adm. To Req. Nos. 65-66;
`
`An All-American Menu, at DIY, App. § E, Req. Nos. 67-68, K0071-
`72, App. § F, Adm. To Req. Nos. 67-68;
`
`All-American Deli Club Sandwich, at landolakescom, App. § E, Req.
`Nos. 96-97, K0108-110, described as an “all-American summertime
`special;” App. § F, Adm. To Req. Nos. 96-97;
`
`All-American Club Sandwich, at landolakescom, App. § E, Req. Nos.
`96, 98, K0108, 111, described as an “an-American lunch special;”
`App. § F, Adm. To Req. Nos. 96, 98;
`
`All-American Baby Ruth Pie, at meals.com, App. § E, Req. Nos. 42-
`43, K00159-160; App. § F, Adm. To Req. Nos. 42-43;
`
`ll
`
`
`
`
`
`- All American Berry Pizza, [meals.com], App. § E, Req. Nos. 42-43,
`K0161-162; App. § F, Adm. To Req. Nos. 42-43;
`
`- All-American Barbecue Sauce, at meals.com, App. § E, Req. Nos. 44-
`45, K0163, App. § F, Adm. To Req. Nos. 44-45;
`
`- All-American Soy Burger, at meals.com, App. § E, Req. Nos. 44-45,
`K0164-167; App. § F, Adm. To Req. Nos. 44-45;
`
`- All-American Burger, at meals.com, App. § E, Req. Nos. 44-45,
`K0164-165, 168-169; App. § F, Adm. To Req. Nos. 44-45;
`
`- All-American Deluxe Cheeseburgers, at meals.com, App. § E, Req.
`Nos. 44-45, K0164-165, 170-171; App. § F, Adm. To Req. Nos. 44-
`45;
`
`-
`
`The All-American Hamburger, at meals.com, App. § E, Req. Nos. 44-
`45, K0164-165, 172-I73; App. § F, Adm. To Req. Nos. 44-45;
`
`- All-American Chili, at al1recipes.com, App. § E, Req. Nos. 46-47,
`K0174-175; App. § F, Adm. To Req. Nos. 46-47;
`
`- All-American Apple Cherry Pie, at westvieworchardscom, App. § E,
`Req. Nos. 48-49, K0176-177; App. § F, Adm. To Req. Nos. 48-49;
`
`The zoerest.com web site which promotes a restaurant and offers private pastry
`
`restaurant services, displays a menu that includes coffee or tea “served with miniature
`
`All-American Cookies.” App. § E, Req. Nos. 103-104, K0115-126, App. § F, Adm. To
`
`Req. Nos. 103-104.
`
`All-American also is used in articles discussing food. For example, a 2001 article
`
`from The Seattle Times, entitled “Cookie Comfort,” discusses cookbooks,
`
`including
`
`Nancy Baggett’s The All-American Cookie Book, stating: “What better time for an ‘All-
`
`American’ theme than now?” K0182-184. Similarly, a December 2, 2001 article from
`
`The Cincinnati Enquirer is titled “An All-American Cookie Maker.” K0017-20. An
`
`August 20, 2003 article “Cookies For Grownups” from The Houston Home Journal refers
`
`to “that all-American treat .
`
`.
`
`. the peanut butter cookie.” K0178-180.
`
`
`
`
`
`D.
`
`Applicant’s Applications To Register And
`Use Of ALL-AMERICAN COOKIES And
`
`ALL-AMERICAN CRACKERS
`
`On September 28, 2001, applicant filed the ALL-AMERICAN COOKIES and
`
`ALL-AMERICAN CRACKERS applications opposed herein. Applicant disclaimed the
`
`terms COOKIES and CRACKERS in the corresponding applications. Each of the
`
`applications was based on an intent to use.
`
`In answer to interrogatories, applicant claimed use of its marks since December 1,
`
`2001, with modest sales. App. B, Supp. Answer To Int. No. 3. The cookie packaging
`
`and photographs of packaging produced by applicant, however, show use only of the
`
`term “All-American Sugar Cookies;” no specimens showing use of ALL-AMERICAN
`
`COOKIES were provided. App. § C, Req. No. 3; App. § D, PARTO33-036.
`
`The descriptive nature of the term All-American is demonstrated by applicant’s
`
`website, which has described applicant‘s products as “All-American Style” since their
`
`introduction. App. § I, Smart Decl. M 2-4, K0207-K0217. Applicant’s All-American
`
`Sugar Cookies and All-American Cracker boxes use graphics intended to be patriotic and
`
`contain the following language (App. § C, Req. No. 3; App. § D, PART033-036):
`
`A percentage of all proceeds Partners, a tasteful choice company collects
`from the sale of this package will be donated to disaster relief charities.
`Thank you for your support.
`
`A similar statement appears on Partners’ website. App. § 1, Smart Decl. 1[1[ 2-4, K0209,
`
`K0213, K0216.
`
`Applicant’s promotional piece emphasizes that the package is designed to have a
`
`patriotic appeal. The literature produced by applicant indicates with respect to its “ALL-
`
`AMERICAN CRACKERS and COOKIES” that:
`
`
`
`
`
`These wrap around photographic style boxes are perfect for the deli, on
`the shelf or in any display, with a patriotic red, white and blue motif.
`
`App. § C, Req. No. 5; App. § D, PART 29-30.
`
`Applicant’s All-American Sugar Cookies And All-American Crackers packaging
`
`bears the mark PARTNERS® A TASTEFUL CHOICE CO., which applicant erroneously
`
`identifies as a registered mark.‘
`
`III.
`
`ARGUMENT
`
`A.
`
`Summary Judgment Is Appropriate
`
`Summary judgment shall be granted where there is no genuine issue of material fact
`
`and the moving party is entitled to judgment as a matter of law. Rule 56 Fed.R.Civ.P.; Rule
`
`2.116(3) T.R.P.; Celorex Corp. v. Catrett, 477 U.S. 317, 323-34 (1986); Sweats Fashions v.
`
`Pannill Knitting C0,, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987) (“Summary judgment is a
`
`salutary method of disposition” designed “'to secure that just, speedy and inexpensive
`
`determination of every action”); Callaway Vineyard & Winery v. Endsley Capital Group,
`
`Inc, 63 USPQ2d 1919, 1921 (TTAB 2002). Here, as discussed below, there is no genuine
`
`issue of material fact that opposer has standing, the marks sought to be registered are
`
`laudatory and descriptive or that app1icant’s marks are without acquired distinctiveness.
`
`Under these circtunstances, summary judgment is appropriate. Id.
`
`B.
`
`Opposer Has Standing
`
`As stated above,
`
`the consolidated opposition involves two applications. The
`
`goods in one case are cookies, SN 76/317807, and in the other crackers, SN 76/318169.
`
`Opposer’s products include both these products. App. § G, Burns Dec]. 1] 2., Opposer
`
`' Applicant does own a registration of PARTNERS A TASTEFUL CRACKER, Reg. No.
`1,845,795.
`
`
`
`
`
`accordingly has standing to oppose the registration of a descriptive term for cookies or
`
`crackers. Binney & Smith, Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1011
`
`(TTAB 1984); Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282 (TTAB
`
`1969).
`
`C.
`
`ALL-AMERICAN COOKIES And ALL-AMERICAN CRACKERS
`Are Laudatory And Merely Descriptive
`
`A mark is considered merely descriptive within the meaning of Section 2(e) (1) if
`
`it describes an ingredient, quality, characteristic, function, or feature of the product to
`
`which it is applied. Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63
`
`USPQ2d 1919, 1921 (TTAB 2002); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
`
`1979).
`
`It is not necessary that the term describe all the characteristics of the product. Id.
`
`Marks that are merely “laudatory” and descriptive of the alleged merit of a
`
`product also are regarded as descriptive.
`
`In re Dos Padres Inc., 49 USPQ2d 1860, 1861
`
`(TTAB 1998) (Laudatory terms are one manner of describing the quality of the goods); In
`
`re Inter-State Oil C0,, Inc., 219 USPQ 1229, 1230 (TTAB 1983) (PREFERRED found
`
`laudatory and therefore descriptive); In re Wileswood, Inc., 201 USPQ 400, 401 (TTAB
`
`1978) (An expression consisting of merely laudatory words is not entitled to protection
`
`without secondary meaning). The combination of a laudatory term with the generic term
`
`for the products in question also is merely descriptive. See, e.g., Hfileswood, supra.
`
`(AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! will be
`
`understood as app1icant’s own appraisal of quality and popularity of its popcorn).
`
`Here, there is no genuine issue that the term “ALL-AMERICAN” is laudatory or
`
`descriptive for cookies and crackers. The term describes something representative of the
`
`best of America or
`
`its ideals.
`
`This a standard dictionary definition of “ALL-
`
`15
`
`
`
`
`
`AMERICAN.” The descriptive, laudatory nature of the term is demonstrated in the
`
`widespread use of “ALL-AMERICAN” in connection with cookies, crackers and other
`
`food products by opposer and others.
`
`The laudatory use of “All-American” to identify something representative of the
`
`best of America has become particularly potent in the aftermath of the September 11,
`
`2001 terrorist attack on America.
`
`Thus,
`
`the December 2, 2001 article from The
`
`Cincinnati Enquirer noted in speaking to the author of The All-American Cookbook,
`
`“Considering recent events and the wave of patriotism, the release of your book is well
`
`timed.” App. § E, Req. Nos. 11-12, K0017-20; App. § F, Adm. To Req. Nos. ll-12.
`
`App1icant’s
`
`intent-to-use applications opposed herein, were each filed on
`
`September 29, 2001, and its first use of ALL-AMERICAN SUGAR COOKIES and ALL-
`
`AMERICAN CRACKERS was on December 1, 2001. App. § B, Answer to Interrog. No.
`
`3; App. § C, Req. No. 3; App. § D, PART032, PART035, PART036. Applicant
`
`promotes its products as “All-American style” and emphasizes their patriotic aspect
`
`through graphics and the statement on its packages:
`
`A percentage of all proceeds Partners, a tasteful choice company collects
`from the sale of this package will be donated to disaster relief charities.
`
`This is similar to the emphasis others, such as the DESIGNER COOKIESTM ALL-
`
`AMERICAN COOKIES products, place on the patriotic aspect with distinctly patriotic
`
`graphics. App. § H, Osborn Decl. 11 2, Exh. A.
`
`D.
`
`Applicant’s Marks Have Not Acquired Secondary Meaning
`
`Given the descriptive nature of the terms ALL-AMERICAN COOKIES and ALL-
`
`AMERICAN CRACKERS, applicant is not entitled to register either mark absent a
`
`showing of secondary meaning. 15 USC §l052; In re Wileswood, Inc., 201 USPQ 400,
`
`
`
`
`
`401 (TTAB 1978). Here, there is no genuine issue of material fact that neither mark has
`
`obtained a secondary meaning.
`
`Relevant factors in determining whether a mark has acquired distinctiveness
`
`include the exclusivity (or lack thereof), length and manner of a party’s use, its sales and
`
`the amount and manner of advertising. Echo Travel, Inc. v. Travel Associates, Inc, 870
`
`F.2d 1264, 10 USPQ2d 1368, 1371 (7"' Cir. 1989). Here, applicant’s marks have been
`
`used less than three years and its sales have been modest: App. § B, Supplemental
`
`Answer To Interrog. No. 3. Applicant likewise has engaged in minimal advertising and
`
`promotion. Id.
`
`Under
`
`these circumstances, applicant’s marks would be without secondary
`
`meaning even if applicant’s use had been exclusive. Here, however, there has been
`
`widespread third party use of ALL-AMERICAN in connection with food products.
`
`There therefore is no genuine issue that neither of applicant’s marks has acquired
`
`distinctiveness. See, Echo Travel, 10 USPQ2d at 1372 (Third party use weighs against a
`
`finding that consumers associate mark with one source); In re Redken Laboratories, Inc.,
`
`170 USPQ 526, 529 (TTAB 1971).
`
`is unclear what use applicant has made of packaging bearing “ALL-
`it
`2 As discussed above,
`AMERICAN COOKIES” as opposed to “ALL-AMERICAN SUGAR COOKIES.” However,
`secondary meaning could not be established even if all of the cookies sales had been in packaging
`bearing the mark at issue.
`
`17
`
`
`
`
`
`IV.
`
`CONCLUSION
`
`For the foregoing reasons, opposer requests entry of judgment sustaining its
`
`oppositions to app1icant’s registrations.
`
`Respectfully submitted,
`
`SMART & BOSTJANCICH
`
`By _l;LW_M
`John Bostjancich
`Patricia S. Smart
`
`19 South LaSal1e Street
`
`Suite 1300
`
`Chicago, Illinois 60603
`(312) 857-2424
`
`Attorneys for Opposer
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, John Bostjancich, an attorney for opposer, hereby certify that a copy of the
`
`foregoing Opposer’s Motion For Summary Judgment And Memorandum In Support
`
`Thereof, together with a copy of the Appendix Of Attachments To 0pposer’s Motion For
`
`Summary Judgment is being served upon Robert Cumbow, Esq., Graham & Dunn PC,
`
`2801 Alaskan Way, Suite 300 — Pier 70, Seattle, WA 98121-1128, this 31st day of
`
`August, 2004, by first class mail, postage prepaid.
`
`L91 l§Lz‘mp4'/"\
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as
`first class mail in an envelope addressed to: Commissioner for Trademarks, Box TTAB NO FEE, 2900
`Crystal Drive, Arlington, Virginia 22202-3514 on August 31, 2004.
`
`3%»; llogamcig
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`KEEBLER COMPANY,
`
`Opposer,
`v.
`PARTNERS, A TASTEFUL CHOICE CO,
`Applicant.
`
`)
`
`i
`i
`§
`3
`
`Opposition No. 91 152728
`Opposition No. 91154926
`
`APPENDIX OF ATTACHMENTS
`
`TO OPPOSER'S MOTION FOR
`
`SUMMARY JUDGMENT
`
`CONTENTS
`
`Section
`
`Opposer's First Set Of Interrogatories To Applicant And Answers Thereto ................. ..A
`
`Opposer’s First Set Of Interrogatories To Applicant
`And Supplemental Answers Thereto .......................................................................... ..B
`
`Opposer’s First Request For Production Of Documents And Responses Thereto........ ..C
`
`Documents From Applicant's Document Production .................................................... ..D
`
`Opposer's First Request For Admissions ....................................................................... .. E
`
`Applicant's Amended Substitute Responses To
`Opposer's First Request For Admission ...................................................................... .. F
`
`Declaration of Carolyn Burns ......................................................................................... ..G
`
`Declaration of Jo Osborn ................................................................................................ ..H
`
`Declaration of Patricia S. Smart ...................................................................................... ..I
`
`Declaration of Mary Winch............................................................................................ .. J
`
`Dictionary Definitions of “All American” ..................................................................... ..K
`
`
`
`
`
`Keebler Company v. Partners, A Tastefid Choice Co.
`Opposition Nos. 91152728 and 91 154926
`
`APPENDIX OF ATTACHMENTS
`
`TO OPPOSER'S MOTION FOR
`
`SUMMARY JUDGMENT
`
`SECTION A
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE
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