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`
`Case 2:15-cv-00681-LPL Document 1 Filed 05/26/15 Page 1 of 11
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`H.J. HEINZ COMPANY
`
`1 PPG Place, Suite 3100
`
`Pittsburgh, PA 15222
`
`Plaintiff,
`
`vs.
`
`BOULDER BRANDS USA, H\IC.
`
`formerly known as GFA BRANDS, INC.
`1600 Pearl Street
`
`Boulder, Colorado 80302
`
`c/o National Corporate Research, Ltd.
`615 S. Dupont Hwy
`Dover, Delaware 19901
`
`Defendant.
`
`\§%%/&/\/\}¥/Q/Q/§/\/\./%/\}%\}%/é
`
`Civil Action No.:
`
`Unassigned
`
`COMPLAINT FOR DE NO V0 REVIEW
`OF DECISION OF THE TRADEMARK
`TRIAL AND APPEAL BOARD AND FOR
`DECLARATORY RELIEF
`
`Plaintiff, H.J. Heinz Company (“Heinz”), for its Complaint against Defendant, Boulder
`
`Brands USA, Inc., formerly known as GFA Brands, Inc. (“Boulder”), hereby states and alleges
`
`as follows:
`
`NATURE OF THE CASE
`
`1.
`
`This is an action under Section 21(b)(1) of the Lanham Act, 15 U.S.C. §
`
`1071(b)(1), seeking de novo judicial review of a final decision of the Trademark Trial and
`
`Appeal Board (“TTAB”), an administrative agency of the United States Patent and Trademark
`
`Office (“USPTO”).
`
`THE PARTIES
`
`2.
`
`Heinz is a Pennsylvania corporation with its principal place of business at One
`
`PPG Place, Suite 3100, Pittsburgh, Pennsylvania, 15222.
`
`

`
`Case 2:15—cv-00681-LPL Document 1 Filed 05/26/15 Page 2 of 11
`
`3.
`
`Defendant Boulder is a Delaware corporation with its principal place of business
`
`at 1600 Pearl Street, Boulder, Colorado 80302. Upon information and belief, Boulder was
`
`previously known as GFA Brands, Inc. until December 31, 2014 when it amended its Certificate
`
`of Incorporation with the state of Delaware to change its legal name to Boulder Brands USA,
`
`Inc.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action seeks review and reversal of a decision of the Trademark Trial and
`
`Appeal Board of the United States Patent and Trademark Office. This action arises under the
`
`laws of the United States, 15 U.S.C. §
`
`l07l(b). Therefore,
`
`this Court has subject matter
`
`jurisdiction over this action pursuant to 28 U.S.C. §1331 and 28 U.S.C. §l338(a).
`
`5.
`
`This Court has personal jurisdiction over Boulder because Boulder has regularly
`
`solicited business or derived substantial revenue from goods promoted, advertised, sold, used,
`
`and/or consumed within this District and expects its actions to have consequences in this District.
`
`Furthermore, upon information and belief, Boulder is actively registered to do business in the
`
`state of Pennsylvania under its prior name GFA Brands Inc. since 2012.
`
`6.
`
`Venue in this District is proper under 28 U.S.C. §§ l39l(b) because Boulder
`
`regularly transacts business within this District.
`
`FACTUAL BACKGROUND
`
`Heinz’s SMART ONES Marks
`
`7.
`
`Heinz is a leading manufacturer and distributor of food products throughout the
`
`United States and the world, including frozen food products.
`
`

`
`Case 2:15-cv-00681-LPL Document 1 Filed 05/26/15 Page 3 of 11
`
`8.
`
`Heinz and its predecessors—in—interest have produced and distributed frozen food
`
`products in the United States since at least May 1992 under the distinctive and famous trademark
`
`SMART ONES.
`
`9.
`
`Heinz owns, by virtue of an assignment dated April 27, 2011,
`
`the following
`
`registrations at the USPTO for its distinctive SMART ONES trademark:
`
`
`
`SMART ONES
`
`
`
`1911590
`
`Aug. 15,1995
`
`
`
`SMART ONES
`
`2204080
`
`Nov. 17,1998
`
`SMART ONES
`
`2916539
`
`Jan. 04,2005
`
`
`
`
`
`
`
`
`SMART ONES
`
`
`SMART ONES
`
`2916538
`
`Jan. 04, 2005
`
`3462182
`
`Jul. 08, 2008
`
`
`
`
`
`
`
`
`
`
`
`Frozen entrees consisting primarily
`of
`chicken,
`beef,
`fish
`and/or
`
`vegetables in Class 29;
`
`Frozen entrees consisting primarily
`of pasta and/or
`rice alone or
`in
`combination with other
`foods
`in
`Class 30
`
`
`
`Frozen desserts consisting of milk
`based
`or milk
`substitute
`based
`
`desserts, cakes, pies and mousses in
`Class 30
`
`
`Pre-cooked ready-to-eat frozen bread
`and/or
`or wrap having a meat
`
`vegetable filling with or without
`cheese in Class 30
`
`Pizza in Class 30
`
`breakfast
`namely,
`foods,
`Frozen
`sandwiches and muffins in Class 30
`
`
`
`
`
`
`
`Copies of these registrations are attached hereto as Exhibit A.
`
`10.
`
`These trademark registrations are valid and subsisting; constitute prima facie
`
`evidence of Heinz’s exclusive right to use the marks in interstate commerce in connection with
`
`the goods specified in the registrations; and serve as constructive notice of Heinz’s ownership of
`
`

`
`Case 2:15—cv-00681-LPL Document 1 Filed 05/26/15 Page 4 of 11
`
`the marks under 15 U.S.C. §§ 1057, 1072, and 1115. Further, these trademark registrations have
`
`all become incontestable as a matter oflaw under 15 U.S.C. § 1065.
`
`11.
`
`Heinz also owns all common law rights and interests in the SMART ONES
`
`trademark (the trademark registrations referenced herein and all common law rights are
`
`hereinafter collectively referred to as the “SMART ONES Marks”).
`
`12.
`
`Since 1992, Heinz and its predecessors in interest have invested significant
`
`amounts of time and money to develop, promote, and maintain the SMART ONES Marks in the
`
`United States.
`
`13.
`
`As a result of substantial sales and extensive advertising and promotion,
`
`the
`
`SMART ONES Marks have become widely and favorably known as identifying frozen foods
`originating from, sponsored by or associated with Heinz. The public has come to associate the
`
`well-known and distinctive SMART ONES Marks with Heinz as the source of high quality
`
`frozen food products sold under the SMART ONES Marks and brand.
`
`The Boulder SMART BALANCE Applications
`
`14.
`
`On November 3, 2009, Boulder, under its prior name GFA Brands, Inc., filed a
`
`federal trademark application, Serial No. 77864305, for the intended mark SMART BALANCE
`
`on an intent-to-use basis under Section 1(b) of the Lanham Act, 15 U.SC. § 1051(b),
`
`in
`
`connection with “frozen appetizers containing poultry, meat,
`
`seafood or vegetables” in
`
`International Class 29 and “frozen entrees consisting primarily of pasta or rice” in International
`
`Class 30.
`
`15.
`
`On November 3, 2009, Boulder, under its prior name GFA Brands, Inc., also filed
`
`a federal
`
`trademark application, Serial No. 77864268,
`
`for
`
`the intended mark SMART
`
`BALANCE on an intent-to-use basis under Section 1(b) of the Lanham Act, 15 U.SC. § 1051(b),
`
`

`
`Case 2:15—cv-00681-LPL Document 1 Filed 05/26/15 Page 5 of 11
`
`in connection with “soy chips and yucca chips; snack mixes consisting primarily of processed
`
`fruits, processed nuts, raisins and/or seeds; nut and seedbased snack bars in International Class
`
`29 and “cake mix, frosting, cakes, frozen cakes, cookies, coffee, tea, hot chocolate, bread, rolls,
`
`crackers, pretzels, chips, snack mixes, spices, snack bars” in International Class 30 (Serial No.
`
`77864305 and 77864268 are collectively referred to as the “Boulder Applications”).
`
`16.
`
`Application Serial No. 77864305 was published for opposition on April 20, 2010
`
`by the USPTO. Application Serial No. 77864268 was later published for opposition by the
`
`USPTO on August 10, 2010.
`
`The Decision of the Trademark Trial and Appeal Board
`
`17.
`
`On May 20, 2010, Heinz’s predecessor in interest, ProMark Brands Inc. filed a
`
`Notice of Opposition against Application Serial No. 77864305 with the TTAB. The proceeding
`
`was instituted under Opposition No. 91194974.
`
`18.
`
`On September 2, 2010, Heinz’s predecessor in interest, ProMark Brands Inc. filed
`
`a Notice of Opposition against Serial No. 77864268 with the TTAB. The proceeding was
`
`instituted under Opposition No. 91196358.
`
`19.
`
`The TTAB consolidated Opposition Nos. 91194974 and 91196358 into one
`
`proceeding on January 27, 2011.
`
`20.
`
`In its Notices of Opposition, Heinz alleged that the intended SMART BALANCE
`
`mark, when used in connection with the goods identified in the Boulder Applications,
`
`is
`
`confusingly similar to the SMART ONES Marks, and would be likely to cause consumer
`
`confusion, mistake, or deceive as to affiliation, connection or association between Heinz and
`
`Boulder, or as to the origin, sponsorship, or approval of Boulder’s goods, services, or other
`
`commercial activities, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`

`
`Case 2:15-cv-00681-LPL Document 1 Filed 05/26/15 Page 6 of 11
`
`21.
`
`The Notices of Opposition were also based on the grounds that the use and
`
`registration of Boulder’s SMART BALANCE mark in connection with the goods set forth in the
`
`Boulder Applications will dilute the distinctiveness of the famous SMART ONES Marks in
`
`violation of Section 2(c) ofthe Lanham Act, 15 U.S.C. § 1125(c).
`
`22.
`
`Following the exchange of discovery and trial testimony, the parties submitted
`
`trial briefs, and oral argument was held before the TTAB before a three-member panel on April
`
`25, 2014.
`
`23.
`
`Contrary to and in spite of the substantial evidence of record, the TTAB issued a
`
`decision on March 27, 2015 finding that the SMART ONES Marks and the Boulder Applications
`
`were not confusingly similar. Further, the TTAB found that dilution of the SMART ONES
`
`Marks was not likely on the grounds that Heinz has not presented sufflcient evidence of fame.
`
`Therefore, Heinz’s consolidated Notice of Opposition was dismissed. A true and correct copy of
`
`the March 27, 2015 decision of the TTAB is attached hereto as Exhibit B.
`
`24.
`
`The TTAB erred in numerous respects in its analysis in dismissing the Opposition
`
`and finding in Boulder’s favor.
`
`25.
`
`This petition of appeal is timely per 15 U.S.C. § 1071(b).
`
`FIRST CAUSE OF ACTION
`
`gReversal of the March 27, 2015 TTAB Decision)
`
`26.
`
`Heinz incorporates and realleges the preceding paragraphs of this Complaint as if
`
`fully set forth herein.
`
`27.
`
`The March 27, 2015 decision of the TTAB is subject to de novo review under
`
`Section 21(b) ofthe Lanham Act, 15 U.S.C. § l071(b).
`
`

`
`Case 2:15-cv-OOo'81—LPL Document 1 Filed 05/26/15 Page 7 of 11
`
`28.
`
`The TTAB erred in finding that Boulder’s intended SMART BALANCE mark for
`
`the goods listed in the Boulder Applications is not likely to be confused with Heinz’s famous
`
`SMART ONES Marks.
`
`29.
`
`The TTAB erred in finding that Boulder’s intended SMART BALANCE mark for
`
`the goods listed in the Boulder Applications will not dilute Heinz’s famous SMART ONES
`
`Marks.
`
`30.
`
`At
`
`least the following aspects of the TTAB’s March 27, 2015 decision are
`
`contrary to the pertinent law, unsupported by substantial evidence, and therefore, insufficient to
`
`support dismissal of Heinz’s consolidated Oppositions under the Lanham Act:
`
`a. The TTAB erred in finding that the meaning and commercial impression of the
`
`SMART ONES Marks and Boulder’s SMART BALANCE mark are different.
`
`b. The SMART ONES Marks are some of the most famous trademarks in the frozen
`
`food category. The TTAB erred by not giving proper weight and consideration to
`
`the strength and fame of the SMART ONES Marks and the evidence of
`
`substantial advertising, use, consumer recognition, marketing, and sales.
`
`0. The TTAB erred in discounting the substantial evidence of the strength and fame
`
`of the SMART ONES Marks and presuming that consumer recognition of the
`
`SMART ONES Marks is
`
`impacted by the presence of the mark “Weight
`
`Watchers” on packaging, despite substantial evidence to the contrary.
`
`d. The TTAB erred in determining that the term “smart” is weak in the frozen food
`
`category.
`
`31.
`
`Heinz will introduce additional evidence of the harm that would be caused to
`
`Heinz if the TTAB decision is not reversed, including but not limited to evidence of the fame of
`
`

`
`Case 2:15-cv-00081-LPL Document 1 Filed 05/26/15 Page 8 of 11
`
`Heinz’s SMART ONES Marks, the amount of advertising and marketing expenditures in support
`
`of the Heinz’s SMART ONES Marks, consumer recognition of the SMART ONES Marks, and
`
`the likelihood of confusion and dilution from Boulder’s use of the SMART BALANCE mark as
`
`set forth in the Boulder Applications.
`
`32.
`
`The TTAB’s decision was contrary to pertinent law, not supported by substantial
`
`evidence and/or was in error in light of the evidence of record with the TTAB, the allegations in
`
`this Complaint, and additional evidence to be submitted by Heinz as set forth above. Therefore,
`
`the TTAB’s March 27, 2015 decision was insufficient to support dismissal of consolidated
`
`Opposition Nos. 91194974 and 91196358.
`
`SECOND CAUSE OF ACTION
`
`(Declaration of Likelihood of Confusion under Federal Law)
`
`33.
`
`Heinz incorporates and realleges the preceding paragraphs of this Complaint as if
`
`fully set forth herein.
`
`34.
`
`An actual controversy exists between Heinz and Boulder regarding the likelihood
`
`of confusion between Boulder’s SMART BALANCE mark and the SMART ONES Marks.
`
`35.
`
`Heinz is entitled to a declaration from the Court
`
`that Boulder’s SMART
`
`BALANCE mark for the goods cited in the Boulder Applications is likely to cause confusion, or
`
`to cause mistake, or to deceive the purchasing public and others as to an affiliation, connection or
`
`association between Heinz and Boulder, and/or as to the origin sponsorship, or approval of
`
`Boulder’s goods, services, or other commercial activities in violation of Section 2(d) of the
`
`Lanham Act, 15 U.S.C. § 1052(d).
`
`

`
`Case 2:15-cv—O(Jo‘81-LPL Document 1 Filed 05/26/15 Page 9 of 11
`
`THIRD CAUSE OF ACTION
`
`{Declaration of Dilution under Federal Law)
`
`36.
`
`Heinz incorporates and realleges the preceding paragraphs of this Complaint as if
`
`fully set forth herein.
`
`37.
`
`An actual controversy exists between Heinz and Boulder regarding the dilution of
`
`Heinz’s SMART ONES Marks by Boulder’s use and potential registration of its SMART
`
`BALANCE mark for the goods listed in the Boulder Applications.
`
`38.
`
`Heinz’s SMART ONES Marks have, through extensive and widespread use by
`
`Heinz, become sufficiently distinct and well known by the public so as to be considered
`
`“famous” for purposes ofthe Lanham Act, 15 U.S.C. § 1l25(c).
`
`39.
`
`Heinz is entitled to a declaration from the Court that the use and registration of
`
`Boulder’s SMART BALANCE mark for the goods cited in the Boulder Applications are likely to
`
`dilute the distinctiveness of the SMART ONES Marks,
`
`in violation of Section 2(c) of the
`
`Lanham Act, 15 U.S.C. § 1125(c).
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff H.J. Heinz Company respectfully requests that the Court:
`
`A. Enter judgment reversing and vacating the March 27, 2015 decision of the TTAB in
`
`the consolidated matter of ProMark Brands, Inc. and HJ. Heinz Company v. GFA
`
`Brands, Inc., Opposition Nos. 91194974 and 91196358 referenced herein, pursuant to
`
`15 U.S.C. § l071(b);
`
`B. Sustain Opposition Nos. 91194974 and 91196358 against Boulder and in favor of
`
`Heinz;
`
`C. Direct the Director of Trademarks to deny registration of the Boulder Applications;
`
`

`
`Case 2:15-cv-O0b81-LPL Document 1 Filed 05/26/15 wage 10 of 11
`
`D. Declare that Boulder’s SMART BALANCE mark, when used and registered in
`
`connection with the goods set forth in the Boulder Applications,
`
`is likely to cause
`
`mistake, or to deceive the purchasing public and others as to an affiliation, connection
`
`or association between Heinz and Boulder, and/or as to the origin sponsorship, or
`
`approval of Boulder’s goods, services, or other commercial activities in violation of
`
`Section 2(d) ofthe Lanham Act, 15 U.S.C. § 1052(d).
`
`E. Declare that use and registration of Boulder’s SMART BALANCE mark for the
`
`goods cited in the Boulder Applications are likely to dilute the distinctiveness of the
`
`SMART ONES Marks, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1125(c).
`
`F. Award Heinz’s attorneys fees and costs in this action; and
`
`G. Award Heinz such other relief as the Court may deem just and proper.
`
`10
`
`

`
`Case 2:l5—CV-O0b8l—LPL Document 1 Filed 05/26/15 wage 11 of 11
`
`Respectfully submitted,
`
`/s/ Ansley S. Westbrook, II
`Ansley S. Westbrook, II, Esq.
`P.A. ID No. 77732
`
`DINSMORE & SHOHL LLP
`Firm No. 732
`One Oxford Centre
`
`301 Grant Street, Suite 2800
`
`Pittsburgh, PA 15219
`Phone: (412) 281-5000
`Fax: (412)281-5055
`Email: ansley.westbrook@dinsmore.com
`
`Counsel for PlaintiffH.J. Heinz Company
`
`Of Counsel
`
`Karen K. Gaunt (Oh. Bar No. 0068418)
`April L. Besl (Oh. Bar No. 0082542)
`Brian S. Sullivan (Oh, Bar No. 0040219)
`B. Joseph Schaeff (Oh. Bar. No. 0013852)
`
`DINSMORE & SHOHL LLP
`
`255 E. Fifth Street, Suite 1900
`Cincinnati, OH 45202
`
`Phone: (513) 977-8200
`Fax: (513) 977-8141
`Email: karen.gaunt@dinsmore.com
`april.besl@dinsmore.com
`brian.sul1ivangagdinsmorecom
`ioseph.schaeff@dinsmore.com
`
`9658875V5
`
`11
`
`

`
`Case 2:15-cv-OOb81-LPL Document 1-1 Filed 05/26/13 Page 1 of 5
`
`Int. Cls.: 29 and 30
`
`Prior U.S. Cl.: 46
`Reg. No. 1,911,590
`_
`_
`Umted States Patent and Trademark Offlce Registered Aug. 15, 1995
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SMART ONES
`
`WEIGHT WATCHERS INTERNATIONAL, INC.
`(VIRGINIA CORPORATION)
`500 NORTH BROADWAY
`JERICHO, NY 11753
`
`FOR: FROZEN ENTREES CONSISTING PRI-
`MARILY OF CHICKEN, BEEF, FISH AND/OR
`VEGETABLES, IN CLASS 29 (US. CL. 46).
`FIRST USE
`5—1—1992;
`IN COMMERCE
`5-1-1992.
`
`FOR: FROZEN ENTREES CONSISTING PRI-
`MARILY OF PASTA AND/OR RICE ALONE
`OR IN COMBINATION WITH OTHER FOODS.
`IN CLASS 30 (U.S. CL. 46).
`FIRST USE
`5-1-1992;
`5-1-1992.
`
`IN COMMERCE
`
`SER. NO. 74—528,148, FILED 5—20—1994.
`
`TINA POMPEY, EXAMINING ATTORNEY
`
`

`
`Case 2:15-cv—0Oo81-LPL Document 1-1 Filed 05/26/13 Page 2 of 5
`
`Int. Cl.: 30
`
`Reg. No. 2,204,080
`Prior U.S. Cl.: 46
`
`United States Patent and Trademark Office Registered Nov. 17, ms
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SMART ONES
`
`WEIGHT WATCHERS INTERNATIONAL, INC.
`(VIRGINIA CORPORATION)
`175 CROSSWAYS PARK WEST
`WOODBURY. NY 11797
`
`FOR: FROZEN DESSERTS CONSISTING OF
`MILK BASED OR MILK SUBSTITUTE BASED
`DESSERTS, CAKES, PIES AND MOUSSES, IN
`CLASS 30 (U.S. CL. 46).
`
`11-3-1997;
`
`FIRST USE
`11-3-1997.
`OWNER OF u.s. REG. Nos. 1,871,763 AND
`1,911,590.
`
`IN COMMERCE
`
`SER. No. 75-415,119, FILED 1-8-1998.
`
`ELIZABETH HUGHITI’, EXAMINING ATTOR-
`NEY
`
`

`
`Case 2:15-cv-00081-LPL Document 1-1 Filed 05/26/11‘) Page 3 of 5
`
`Int. Cl.: 30
`
`Prior U.S. Cl.: 46
`
`Reg. No. 2,916,539
`United States Patent and Trademark Office Registered Jan. 4,2005
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SMART ONES
`
`PROMARK BRANDS INC.
`TION)
`877 WEST MAIN STREET, SUITE 604
`BOISE, ID 83702
`
`(IDAHO CORPORA-
`
`FOR: PRE-COOKED READY—TO-EAT FROZEN
`BREAD OR WRAP HAVING A MEAT AND/OR
`VEGETABLE FILLING WITH OR WITHOUT
`CHEESE’ IN CLASS 30 (US. CL. 46).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, s1zE, QR coLoR_
`
`OWNER OF US‘ REG NOS“ "9”’59° AND
`2’2°4’°8°'
`
`SER. NO. 78-352,011, FILED 1-14-2004.
`
`FIRST USE 4-1-2001; IN COMMERCE 4-1-2001.
`
`AMY GEARIN, EXAMINING ATTORNEY
`
`

`
`Case 2:15-cv-00081-LPL Document 1-1 Filed 05/26/11) Page 4 of 5
`
`Int. Cl.: 30
`
`Prior U.S. C1.: 46
`
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`Reg. No. 2,916,538
`Registered Jan. 4,2005
`
`SMART ONES
`
`PROMARK BRANDS INC. (IDAHO CORPORA-
`TION)
`877 WEST MAIN STREET, SUITE 604
`BOISE, ID 83702
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT: STYLE: SIZE OR COLOR-
`OWNER OF U.S. REG. NOS. 1,911,590 AND
`2,204,080.
`
`FOR‘ PIZZA’ IN CLASS 3° (U3 CL‘ 46)‘
`
`SER. NO. 73-351,994, FILED 1-14.2004.
`
`FIRST USE 11-30-1997; IN COMMERCE 11-30-1997.
`
`AMY GEARIN, EXAMINING ATTORNEY
`
`

`
`Case 2:15-CV-00081-LPL Document 1-1 Filed 05/26/11) Page 5 of 5
`
`Int. Cl.: 30
`
`Prior U.S. CL: 46
`
`Reg. No. 3,462,182
`United States Patent and Trademark Office
`Registered July 8, 2008
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SMART ONES
`
`PROMARK BRANDS INC.
`TION)
`2541 NORTH STOKESBERRY PLACE, SUITE 100
`MERIDIAN, ID 83646
`
`(IDAHO CORPORA-
`
`FOR: FROZEN FOODS, NAMELY, BREAKFAST
`SANDWICHES AND MUFFINS, IN CLASS 30 (U.S.
`CL. 46).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,911,590, 2,916,539
`AND OTHERS.
`
`SER. NO. 77-368,176, FILED 1-10-2008.
`
`FIRST USE 12-31-1997; IN COMMERCE 12-31-1997.
`
`MARY MUNSON, EXAMINING ATTORNEY
`
`

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`Case 22l5—CV-OObc51—LPL Document 1-2 Filed 05/26/15 Page 1 of 44
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`THIS OPINION IS A
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`PRECEDENT OF THE
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`TTAB
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`Hearing: April 25, 2014
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`Mailed: March 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`ProMark Brands Inc. and H.J. Heinz Company
`U.
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`GFA Brands, Inc.
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`Opposition No. 91194974
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`Opposition No. 91196358
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`Matthew J. Cavanagh, of McDonald Hopkins LLC for H. J. Heinz Company and
`ProMark Brands, Inc.
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`David R. Cross, Marta S. Levine, and Johanna M. Wilbert of Quarles & Brady LLP
`for GFA Brands, Inc.
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`Before Rogers, Chief Administrative Trademark Judge, Ritchie, and Masiello,
`Administrative Trademark Judges
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`Opinion by Rogers, Chief Administrative Trademark Judge:
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`GFA Brands,
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`Inc.
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`(“Applicant”) filed two applications to register the mark
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`SMART BALANCE, in standard character form, for goods identified as follows:
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`Case 2:15-cv-0Obd1-LPL Document 1-2 Filed 05/26/15 Page 2 of 44
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`frozen appetizers containing poultry, meat, seafood or vegetables in
`International Class 29; frozen entrees consisting primarily of pasta or
`rice in International Class 30;1
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`soy chips and yucca chips; snack mixes consisting primarily of
`processed fruits, processed nuts, raisins and/or seeds; nut and seed-
`based snack bars in International Class 29; cake mix, frosting, cakes,
`frozen cakes, cookies, coffee, tea, hot chocolate, bread, rolls, crackers,
`pretzels, chips, snack mixes, spices, snack bars in International Class
`30.2
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`ProMark Brands Inc.
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`(“ProMark”) opposed both applications and the Board
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`consolidated the proceedings. Prior
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`to trial, ProMark assigned its pleaded
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`registrations to H. J. Heinz Company (“Heinz”) and the Board joined Heinz with
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`Promark (collectively
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`“Opposers”)
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`as parties-plaintiff
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`in
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`the
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`consolidated
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`proceeding.3
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`The case is fully briefed.4 An oral hearing was held on April 25, 2014 and was
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`presided over by this panel.
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`1Application Serial No. 77864305, filed November 3, 2009, under Trademark Act § 1(b), 15
`U.S.C. § 1051(b).
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`2 Application Serial No. 77864268, filed November 3, 2009, under Trademark Act § 1(b), 15
`U.S.C. § 1051(b).-
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`3 On June 30, 2011, ProMark moved to substitute Heinz for ProMark in the consolidated
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`proceedings. ProMark attached a copy of the relevant assignment records from the
`USPTO’s website in support of its motion. Construing the filing as a motion to join because
`the assignments occurred after commencement of both proceedings,
`the Board granted
`joinder. Board Order dated July 26, 2011 at 1 n.1, 17 TTABVUE. See Drive Trademark
`Holdings LP U. Inofin, 83 USPQ2d 1433, 1434 n.2 (TTAB 2007); Trademark Trial and
`Appeal Board Manual of Procedure (“TBMP”) §512.01 (2014). Record citations are to
`TTABVUE, the Board’s publically available docket history system. See Turdin U. Trilobite,
`Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
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`4 The Board previously set aside an order striking Applicant’s final brief as untimely filed.
`Board Order dated April 11, 2014, 107 TTABVUE. The Board has considered all briefs filed
`in this matter.
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`-2-
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`

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`Case 2:15-cv-00661-LPL Document 1-2 Filed 05/26/15 Page 3 of 44
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`I.
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`Opposers’ claims.
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`Opposers allege long and continuous use of the SMART ONES mark in the
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`commercially successful marketing of a wide variety of frozen foods and ownership
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`of the following federal trademark registrations for SMART ONES, in standard
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`character form:5
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`1911590
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`2204080
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`2916539
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`Frozen entrees consisting primarily of chicken,
`vegetables in International Class 29.5
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`fish and/or
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`Frozen desserts consisting of milk based or milk substitute
`based desserts, cakes, pies and mousses in International Class
`30.7
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`Pre-cooked ready-to-eat frozen bread or wrap having a meat
`and/or vegetable filling with or without cheese in International
`Class 30.8
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`2916538
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`Pizza in International Class 30:9
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`8462182
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`Frozen foods, namely, breakfast sandwiches and muffins in
`International Class 30.10
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`5 The mark depicted in Registration No. 1911590 is a typed drawing. Effective November 2,
`2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed”
`drawing with “standard character” drawing. A mark depicted as a typed drawing is the
`legal equivalent of a standard character mark. Trademark Manual of Examining Procedure
`(“TMEP”) § 807.03(i) (2014).
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`6 Issued August 15, 1995; affidavit under § 8 accepted; affidavit under § 15 acknowledged;
`renewed.
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`17,
`7Issued November
`acknowledged; renewed.
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`1998; affidavit under
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`§
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`8 accepted; affidavit under
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`§
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`15
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`8 Issued January 4, 2005; affidavit under § 8 accepted; affidavit under § 15 acknowledged.
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`9 Issued January 4, 2005; affidavit under § 8 accepted; affidavit under § 15 acknowledged.
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`1° Issued July 8, 2008; affidavit under § 8 accepted; affidavit under § 15 acknowledged.
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`- 3 -
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`Case 2:15-cv-Oobdl-LPL Document 1-2 Filed 05/26/15 Page 4 of 44
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`Opposers claim that Applicant’s SMART BALANCE mark, when applied to
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`Applicant’s identified goods, so resembles Opposers’ earlier used and registered
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`SMART ONES mark as to be likely to cause confusion, mistake or deception in
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`Violation of Trademark Act § 2(d), 15 U.S.C. § 1052(d). Opposers also claim that
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`Applicant’s mark is likely to dilute the distinctiveness of its unique and famous
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`mark in violation of Trademark Act § 43(0), 15 U.S.C. § 1125(c).
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`II.
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`Applicant’s answers and defenses.
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`Applicant denied the salient allegations of the Notices of Opposition and
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`asserted Various putative affirmative defenses in both proceedings.“ Because
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`Applicant did not pursue any affirmative defenses, either through presentation of
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`evidence at trial or in its brief, ‘any such defenses are waived. Research in Motion
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`Ltd. U. Defining Presence Mktg. Grp. Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012);
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`Swiss Watch Int’l Inc. U. Fed’n of the Swiss Watch Indus, 101 USPQ2d 1731, 1734
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`n.4 (TTAB 2012).
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`11 Opposition No. 91194974, Answer of GFA Brands, Inc., 4 TTABVUE; Opposition No.
`91196358, Answer of GFA Brands,
`Inc., 4 TTABVUE. The bulk of Applicant’s listed
`defenses are not true affirmative defenses but allege Opposers’ lack of standing,
`the
`insufficiency of their pleadings, or constitute amplifications of Applicant’s denials of the
`allegations of likelihood of confusion and likelihood of dilution. See Trademark Rule
`2.106(b)(1), 37 C.F.R. § 2.106(b)(1).
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`Case 2:l5—cv-OObc51-LPL Document 1-2 Filed 05/26/15 Page 5 of 44
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`III. Evidence ofrecord.
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`The record consists of the pleadings, and by operation of Trademark Rule
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`2.122(b), 37 C.F.R. § 2.122(b), the involved application files. In addition, the parties
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`introduced the following testimony and evidence:12
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`A.
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`Opposers’ testimony and evidence.
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`1.
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`Opposers’ Notices of Reliance upon the following evidence:
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`a.
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`Applicant’s
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`responses
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`to Opposers’
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`first
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`set
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`of
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`interrogatories and requests for admission.13
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`b.
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`Select pages from the website www.eatyourbest.com, as of
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`March 11, 2013.14
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`c.
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`Discovery deposition of expert Dr. Leon B. Kaplan,
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`President and CEO of Princeton Research & Consulting
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`Center, Inc., a survey research firm, taken on April 24,
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`2012 (“Kaplan I”).15
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`12 The parties each submitted testimony and/or exhibits that contained information
`designated confidential. With respect to each such submission, we have indicated where the
`confidential version is docketed and Where the redacted, publicly available version is
`docketed. Unless otherwise noted, any references to testimony or exhibits are to the
`publicly available version.
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`13 51 TTABVUE.
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`14 52 TTABVUE.
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`15 54 TTABVUE. Opposers’ notice of reliance is improper as Dr. Kaplan is not an officer,
`director or managing agent of Applicant, nor is he a corporate designee pursuant to Fed. R.
`Civ. P. 30(b)(6). See Trademark Rule 2.1200), 37 C.F.R. § 2.120(j). We note, however,
`Applicant’s failure to object and the fact that the substance of the discovery deposition does
`not conflict with the substance of the same witness’s testimony deposition, and so does not
`affect our consideration of the outcome. Accordingly, we treat the notice of reliance as
`stipulated into the record by the parties. See Spoons Rests. Inc. U. Morrison Inc., 23
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`.5-
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`Case 2:15-cv—O0bt51-LPL Document 1-2 Filed 05/26/15 Page 6 of 44
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`cl.
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`Discovery deposition of expert Philip Johnson, Chief
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`Executive Officer of Leo B. Shapiro & Associates, a
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`marketing research firm, taken on December 18, 2012
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`(“Johnson I”).16
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`2.
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`Testimony deposition of Eric Michael Gray, Associate Director of
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`the Smart Ones brand for Heinz North America,
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`taken on
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`February 20, 2013.17
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`3.
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`Testimony deposition of Sabrina J. Hudson, Associate Director
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`and General Counsel of Heinz, taken on February 20, 2013.13
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`4.
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`Testimony deposition of expert Dr. Barry A. Sabol, President of
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`Strategic Consumer Research, Inc., a market research company,
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`and accompanying exhibits.19
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`USPQ2d 1735, 1737 n.11 (TTAB 1990) (no objection to applicant's introduction of discovery
`deposition of officer of opposer's parent corporation by notice of reliance and thus Board
`deemed the parties to have stipulated the deposition into the record), aff’d mem., 972 F.2d
`1353 (Fed. Cir. 1992).
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`16 53 TTABVUE. We will treat the notice of reliance on Mr. Johnson’s expert discovery
`deposition in the same fashion as the notice of reliance on Dr. Kaplan’s expert discovery
`deposition, for the same reasons. See supra note 15.
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`17 The confidential version of the Gray deposition is docketed at 55 TTABVUE; the publicly-
`available version is docketed at 56 TTABVUE.
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`13 The confidential version of the Hudson deposition is docketed at 57 TTABVUE; the
`publicly-available version is docketed at 58 TTABVUE.
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`19 The confidential version of the Sabol deposition is docketed at 59 TTABVUE;
`publicly-available version is docketed at 60 TTABVUE.
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`the
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`-6-
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`Case 2:15-CV-O0bt5l-LPL ‘Document 1-2 Filed 05/26/15 Page 7 of 44
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`B.
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`Applicant’s testimony and evidence.
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`1.
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`App1icant’s Notices of Reliance upon the following evidence:
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`a.
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`Printouts from the electronic database records of the
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`USPTO showing the current status and title of seven
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`registrations owned by Applicant for the mark SMART
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`BALANCE, in typed or standard character format, for a
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`Variety of goods in International Classes 29 and 30.20
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`b.
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`Printouts from the electronic database records of the
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`USPTO showing the current status and title of fourteen
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`third-party registrations for marks incorporating the
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`word “SMART” for goods in International Classes 5, 29,
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`30, 31, and 32.21
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`c.
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`Pages from websites indicating third-party use of the
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`word “SMART” in conjunction with the marketing of food
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`and other health-related goods and diet and health-
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`related cookbooks.”
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`2° 66 TTABVUE.
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`21 61, 62, and 63 TTABVUE.
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`22 63, 64, 65, and 66 TTABVUE.
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`Case 2:15-CV-0Obd1-LPL Document 1-2 Filed 05/26/15 Page 8 of 44
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`d.
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`Original product packaging (and photographs of the same)
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`for various third-party food items showing use of the word
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`“SMART.”23
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`e.
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`Discovery deposition of Marian Joan Findlay, Senior
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`MarketingManager for Heinz, and accompanying
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`exhibits.“
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`2.
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`Testimony deposition of Timothy Kraft, Vice—President and
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`Associate General Counsel
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`for GFA Brands,
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`Inc.,
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`and
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`accompanying exhibits.25
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`3.
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`Testimony deposition of William E. Hooper, Director of GFA
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`Brands, Inc. and senior advisor to the marketing groups of GFA
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`Brands, Inc. 26
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`23 66, 68, and 81 TTABVUE.
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`24 The entire discovery deposition of Marion Joan Findlay and accompanying exhibits were
`designated as “Confidential,” and that material is docketed at 67 and 69-80 TTABVUE but
`currently unavailable for public viewing. Board proceedings are open to the public and, as a
`result, only truly confidential information should be designated as such. While we observe
`such designations as a general rule, we will not do so where they plainly do not apply and
`where to do so would hamper our analysis of the proceeding. In view thereof, Opposers are
`allowed 30 days from the mailing date of this decision to refile the Findlay deposition transcript
`separating the confidential
`testimony from the nonconfidential
`testimony pursuant
`to the
`instructions in TBMP § 120.02, failing which the above-noted transcript will be made available to
`the public.
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`25 Confidential Exhibit # 76 to the Kraft deposition is docketed at 90 TTABVUE; the
`publicly-available version is docketed at 85 TTABVUE.
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`26 The confidential version of the Hooper deposition is docketed at 88 TTABVUE; the
`publicly-available version is docketed at 89 TTABVUE.
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`-8-
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`Case 2:15-cv-00681-LPL Document 1-2 Filed 05/26/15 Page 9 of 44
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`4.
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`Testimony deposition of William Shanks, Private Investigator
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`for Marksmen, lnc., and accompanying exhibits.27
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`5.
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`Testimony deposition of expert Dr. Leon B. Kaplan, identified
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`above, and accompanying exhibits (“Kaplan II”).23
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`6.
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`Testimony deposition of expert Philip Johnson, identified above,
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`and accompanying exhibits (“Johnson H’’