Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA634569
`ESTTA Tracking number:
`10/22/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206869
`Plaintiff
`Red Mango, Inc.
`JOHN J DABNEY
`MCDERMOTT WILL EMERY LLP
`500 NORTH CAPITOL STREET NW
`WASHINGTON, DC 20001
`UNITED STATES
`jdabney@mwe.com, kbukrinsky@mwe.com, dciplit@mwe.com
`Opposition/Response to Motion
`John J. Dabney
`jdabney@mwe.com, kbukrinsky@mwe.com, dciplit@mwe.com
`/s/ John J. Dabney
`10/22/2014
`RMI's Opposition, Cross-Motion, and 56(d) Motion.pdf(125312 bytes )
`Kaloustian Decl.pdf(81743 bytes )
`Bukrinsky Decl.pdf(24086 bytes )
`Ex 1 - media.compressed.pdf(1305382 bytes )
`Ex 2 - Red Mango Frozen Yogurt Store Locator _ Red Mango Frozen Yogurt
`Smoothies.pdf(1053053 bytes )
`Ex 3 - Red Mango Resp to Office Action.pdf(47837 bytes )
`Ex 4 - RM menu.pdf(593101 bytes )
`Ex 5 - Defendant's franchising.pdf(394044 bytes )
`Ex 6 - 30b6 Notice.pdf(34979 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91206869 (Parent)
`Opposition No. 91206870
`Cancellation No. 92056319
`
`
`
`
`RED MANGO, INC.,
`
`Plaintiff,
`
`
`
`
`
` v.
`
`
`FOUR JACKSONS INVESTMENTS, LLC,
`
` Defendant.
`
`
`
`
`
`
`
`PLAINTIFF’S OPPOSITION TO DEFENDANT’S MOTION FOR SUMMARY
`JUDGMENT AND PLAINTIFF’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`Plaintiff Red Mango Inc. (“RMI”) opposes the Motion for Summary Judgment filed by
`
`Defendant Four Jacksons Investments, LLC (“Defendant”). Defendant seeks summary judgment
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`on RMI’s Section 2(d) claim. Defendant’s motion contends that the parties’ marks RED
`
`MANGO and THE MELLOW MANGO are not confusingly similar as a matter of law. But
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`Defendant expressly admits that RMI’s RED MANGO mark is “famous”; that the parties’
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`services are identical; that the parties target the same consumers in the same trade channels; that
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`consumers are unlikely to act with a high degree of care when purchasing the services; and that
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`Defendant knew about RMI’s “famous” mark and restaurant and café services before adopting
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`its mark. The undisputed evidence, including Defendant’s admissions, negates Defendant’s
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`summary judgment motion, and supports RMI’s cross motion for summary judgment on its
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`Section 2(d) claim.
`
`In an abundance of caution, RMI seeks relief under Rule 56(d), which allows for
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`additional discovery when opposing a summary judgment motion. Long before Defendant filed
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`this motion, RMI noticed Defendant’s deposition and sought information on RMI’s Section 2(d)
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`claim including, among other things, actual confusion, similarity of the marks, Defendant’s bad
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`

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`faith intent, and whether Defendant could properly obtain an assignment of Defendant’s intent-
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`to-use applications for THE MELLOW MANGO under the facts and circumstances present here.
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`Defendant initially designated two different designees to testify on Defendant’s behalf.
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`Suddenly thereafter, with no advance notice, Defendant refused to produce a witness and quickly
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`filed this motion as well as a motion to suspend proceedings instead. The Board can draw its
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`own conclusion as to Defendant’s intent in adopting its mark and the presence of actual
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`confusion from Defendant’s sudden summary judgment filing and refusal to produce a witness.
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`At a minimum, RMI must have the opportunity to gather evidence on these and other specified
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`factors through Defendant’s deposition and be allowed to supplement its opposition with the
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`evidence secured from the deposition if the Board is inclined to grant summary judgment to
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`Defendant on its summary judgment motion.
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`Finally, RMI also cross moves for summary judgment on Defendant’s Section 2(e)
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`counterclaim. Defendant’s counterclaim alleges that the word “Mango” in RMI’s mark RED
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`MANGO is “merely descriptive” of “restaurant and café services” and thus, should be
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`disclaimed. The undisputed evidence is that the word “Mango” in RMI’s mark RED MANGO is
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`not “merely descriptive” and summary judgment should be granted to RMI on Defendant’s
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`Counterclaim.
`
`RMI’S COUNTERSTATEMENT OF FACTS
`
`1. Defendant’s predecessor in interest filed application 85482855 for THE MELLOW
`MANGO for use in connection with “Frozen yogurt shop services in the nature of a
`restaurant” on November 29, 2011.
`
`Countestatement: RMI does not know whether or not Defendant obtained a valid
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`assignment of this intent-to-use application and Defendant has refused to allow RMI to
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`conduct discovery on this issue.
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`
`
`2
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`

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`2. Defendant’s predecessor in interest filed application 85541795 for THE MELLOW
`MANGO and Design for use in connection with “Frozen yogurt shop services in the
`nature of a restaurant” on February 14, 2012.
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`Countestatement: RMI does not know whether or not Defendant obtained a valid
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`assignment of this intent-to-use application and Defendant has refused to allow RMI to
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`conduct discovery on this issue.
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`3. RMI owns and franchises a chain of frozen yogurt shops. There are less than 200 RED
`MANGO locations nationwide. The exact number is set forth in Exhibit A (the “Sealed
`Exhibit”) which includes pages from RMI’s Franchise Disclosure Document issued
`March 27, 2014, which RMI claims is confidential.
`
`Counterstatement: RMI opened its first frozen yogurt cafe in 2007, and is widely
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`acknowledged as the pioneer of the frozen yogurt movement in the United States. (See
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`Ex. 1 to Bukrinsky Decl.1) RMI’s shops have been extensively lauded in the media, and
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`have been enormously successful. (Id.) RMI currently owns or franchises over 170
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`frozen yogurt cafes nationwide, including in North Carolina. (Def’s Ex. A.)
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`4. RMI owns the following United States trademark registrations:
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`Mark
`
`Goods/Services
`
`Registration
`Number
`3,506,567
`
`Red Mango
`
`3,745,000
`
`Red Mango
`
`Date Filed:
`
`Date
`Registered:
`March 17, 2006 September 23,
`2008
`February 2,
`2010
`
`December 18,
`2006
`
`restaurant and café
`services
`disposable napkins and
`paper food and beverage
`containers in class 016; paper
`and plastic cups, bowls, and
`food and beverage containers
`in class 021; and franchising
`in class
`035
`
`Red Mango Yogurt, yogurt
`4029360
`
`1 All RMI’s exhibits cited herein are to the Bukrinsky Declaration submitted simultaneously with this
`Opposition.
`
`November 13, September 20,
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`
`
`3
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`

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`
`
`
`
`
`
`4029359
`
`4302086
`
`4373530
`4602909
`
`4602907
`
`4602929
`
`drinks, yogurt-based
`beverages, and dairy-
`based beverages
`Red Mango Frozen yogurt; frozen
`yogurt confections; frozen
`yogurt mixes; frozen
`yogurt
`parfaits; yogurt-based
`shakes; shakes; parfaits;
`coffee and
`tea; tea-based
`beverages; iced tea; mixes
`in the nature of
`concentrates, syrups or
`powders used in
`the preparation of tea based
`beverages.
`O Red Mango Lip balm
`
`O Red Mango Candles
`Café Red
`Restaurant services
`Mango
`Red Mango
`Café
`O Red Mango
`Café
`
`Restaurant services
`
`Restaurant services
`
`2009
`
`2011
`
`November 13,
`2009
`
`September 20,
`2011
`
`June 17, 2011 March 12,
`2013
`July 23, 2013
`June 7, 2012
`July 26, 2013 September 9,
`2014
`July 26, 2013 September 9,
`2014
`September 9,
`2014
`
`August 5,
`2013
`
`Each of the highlighted registrations disclaims exclusive rights in the word “mango.”
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`
`
` Counterstatement: RMI only asserted Reg. No. 3,506,567 and Reg. No. 3,745,000 in
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`this proceeding and the word “mango” is not disclaimed in either of these registrations
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`because, after considering argument from RMI, the Examiner agreed that the term
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`“Mango” was not “merely descriptive” of the applied-for goods and services. Indeed,
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`none of RMI’s registrations for “restaurant and café services” disclaim the word
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`“mango.” RMI did not assert the other registrations for RED MANGO identified in
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`Defendant’s chart in this proceeding and those registrations are for different goods and
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`services than the registrations that were pleaded by RMI here.
`
`4
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`
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`

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`5. Applicant acknowledges and stipulates that it knew about RMI and RMI’s trademark
`registrations and its goods and services when it adopted “The Mellow Mango” marks.
`
`Counterstatement: Long before Defendant filed this motion, RMI issued a deposition
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`notice to Defendant on topics relating to bad faith. Defendant refused to attend the
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`deposition and instead filed this summary judgment motion and sought to suspend this
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`proceeding. A deposition would reveal that Defendant deliberately adopted the name
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`THE MELLOW MANGO because of its similarity to RMI’s “famous” RED MANGO
`
`marks, with the intent to trade off of the goodwill in RMI’s RED MANGO marks.
`
`6. Applicant agrees and stipulates that the goods and services of the two parties are
`comparable, that the same consumers are likely to encounter both marks, the goods and
`services of the parties are distributed through the same channels of trade, and that
`consumers are not likely to exercise a high degree of care when purchasing the goods and
`services of the parties.
`
`Counterstatement: None.
`
`7. RMI’s annual advertising expenditures for 2011, 2012, and 2013 are set forth in the
`Sealed Exhibit.
`
`Counterstatement: RMI does not contest this fact, which shows that RMI spends
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`hundreds of thousands of dollars each year in promotion of its RED MANGO marks and
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`goods and services, including through print advertising in newspapers and trade
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`magazines, television and radio ads, billboards, and internet advertising and social media.
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`(See Def’s Ex. D at p.7 (RMI’s Response to ROG No. 14).) RMI’s goods and services
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`are also the subject of numerous unsolicited media articles and blog posts, which laud
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`RMI’s quality and innovation in bringing frozen yogurt to the United States. (See Ex. 1.)
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`8. Applicant stipulates solely for this motion that RMI’s RED MANGO mark is “famous.”
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`Counterstatement: None.
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`
`5
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`9. RMI has a location in Durham, North Carolina. Exhibit B.
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`Counterstatement: RMI does not contest that it has a location in Durham, NC. RMI
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`also has locations at High Point, NC and Greensboro, NC, along with approximately 170
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`additional locations throughout the United States. (Ex. 2 (RMI’s locations).)
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`10. Defendant’s three locations are in Fayetteville North Carolina Exhibit C, which is
`approximately 75 miles from Durham, North Carolina.
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`Counterstatement: RMI cannot confirm the truth or falsity of Defendant’s allegation.
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`Long before Defendant suddenly filed this motion, RMI noticed Defendant’s deposition
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`on topics involving the geographic locations of Defendant’s services. But Defendant
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`refuses to attend the properly noticed deposition.
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`11. There is no evidence of any instances of actual confusion. Exhibit D.
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`Counterstatement: RMI contests Defendant’s Fact #11. While RMI is unaware of
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`instances of actual confusion, such evidence is in the possession of Defendant. Before
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`Defendant suddenly filed this motion, RMI noticed Defendant’s deposition to uncover
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`this evidence, but Defendant refused to permit RMI to take its deposition.
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`ADDITIONAL RELEVANT UNCONTESTED FACTS
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`12. RMI does not sell mangos as a separate item in its restaurant and its house specialty is not
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`and never was mangos. (Declaration of Gregory Kaloustian ¶¶ 4-5; see generally RMI’s
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`website at redmangousa.com.) The RED MANGO mark was selected to “evoke the
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`bright, fun atmosphere of its restaurant and café establishments,” as well as to
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`“symbolize[] the stage of ripening just before the full maturation color of yellow in many
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`mangoes, thus serving as a symbol of further growth to come.” (Ex. 3 (RMI’s 1-11-2007
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`Response to Office Action) at p. 3-4.) The significance of this mark is a “reminder to be
`
`
`
`6
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`

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`always humble to one’s nature, customers and oneself and [the mark] also symbolizes
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`[RMI]’s passion towards nature, mankind and life.” (Id. at p. 4.)
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`13. Mangos are rarely, if ever, red in color, and in fact the “red mango” is not a varietal of
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`mangos. (Ex. 3 at pp. 4-6.) Mangos are most commonly green or yellow. (Id. at p. 6.)
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`14. RMI’s RED MANGO-branded cafes sell over 50 flavors of frozen yogurt, including
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`dozens of fruit flavors. RMI’s RED MANGO-branded cafes also sell dozens of different
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`frozen yogurt toppings, as well as smoothies, lemonade, gourmet hot chocolate, and
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`coffee. (See Ex. 4 (RMI’s menu).) Mangos are included in only 2 of approximately 50
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`yogurt flavors, and 1 of approximately 50 yogurt toppings offered by RMI in its RED
`
`MANGO-branded cafes and restaurants. (Kaloustian Decl. ¶ 5.) Very few items on
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`RMI’s menu include mangos or mango flavoring. (See id.; see also Def’s Motion at 8-
`
`10.)
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`15. RMI’s RED MANGO marks registered without evidence of secondary meaning. (See
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`generally Prosecution Record for cited marks).
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`16. Defendant’s website indicates an intention and desire to offer franchising services under
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`the RED MANGO mark. (See Ex. 5.)
`
`17. Long before Defendant filed its Motion, RMI sought Defendant’s corporate deposition on
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`a number of topics, including actual confusion, similarity of the marks, Defendant’s bad
`
`faith intent, and whether Defendant could properly obtain an assignment of Defendant’s
`
`intent-to-use applications for THE MELLOW MANGO under the facts and
`
`circumstances present here. (See Bukrinsky Decl. ¶¶ 9-16 & Ex. 6 thereto.) Defendant
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`initially agreed to produce witnesses, but then improperly withdrew its agreement and,
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`without further notice, filed this Motion, thus preventing RMI from obtaining discovery
`
`
`
`7
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`

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`regarding these topics – discovery that RMI would have used to oppose Defendant’s
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`Motion. (Id.)
`
`LEGAL STANDARD
`
`
`
`“Summary judgment is appropriate where the movant has established that there is no
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`genuine issue as to any material fact and that the movant is entitled to judgment as a matter of
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`law.” Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 1345 (Fed.
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`Cir. 2010). All evidence must be viewed in a light most favorable to the nonmoving party, and
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`all justifiable inferences must be drawn in the nonmovant's favor. Lloyd's Food Products, Inc. v.
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`Eli's, Inc., 987 F.2d 766, 767 (Fed. Cir. 1993). “In deciding motions for summary judgment, the
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`Board may not resolve issues of material fact; it may only ascertain whether such disputes as to
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`material facts exist.” Dan Foam ApS v. Sleep Innovations, Inc., 2013 TTAB LEXIS 222, at *14-
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`15, 106 U.S.P.Q.2D 1939 (TTAB, May 13, 2013).
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`ARGUMENT
`
`DEFENDANT IS NOT ENTITLED TO SUMMARY JUDGMENT ON
`RMI’s 2(d) CLAIM
`
`I.
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`
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`Defendant must prove that as a matter of law confusion is unlikely between RED
`
`MANGO and THE MELLOW MANGO. Defendant acknowledges that likelihood of confusion
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`is determined by the factors in In re E. I. Dupont de Nemours & Co., 476 F.2d 1357, 1361, 177
`
`U.S.P.Q. 563, 567 (CCPA 1973). Defendant also concedes that the following factors support a
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`likelihood of confusion in this case, and thus the denial of its summary judgment motion: the
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`parties’ goods and services are identical; the parties’ trade channels are identical; the parties’
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`promotion of the goods is identical; and consumers are likely to make impulse purchases of the
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`parties’ goods. (Statement of Facts (“SOF”) ¶ 6.) Defendant also expressly admits that RMI’s
`
`
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`8
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`

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`marks are “famous” and that Defendant was familiar with RMI’s marks and goods and services
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`before it registered its mark. (SOF ¶¶ 5, 8.)
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`Nonetheless, Defendant argues that it is entitled to summary judgment because the
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`parties’ marks are so dissimilar that there could not be a likelihood of confusion as a matter of
`
`law. As shown below, Defendant cannot prove the absence of a genuine issue of material fact
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`with regard to the similarity of marks factor, and cannot show that upon balance, the likelihood
`
`of confusion factors mandate summary judgment. Thus, Defendant’s motion must be denied.
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`Indeed, as explained below, the Board should grant RMI’s cross motion for summary judgment
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`on RMI’s Section 2(d) claim because there is a likelihood of confusion as a matter of law.
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`
`
`A.
`
`Defendant Admits That RMI’s RED MANGO Mark is “Famous”
`
`“A mark's strength is measured both by its conceptual strength (distinctiveness) and its
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`marketplace strength (secondary meaning).” See In re Chippendales USA, Inc., 622 F.3d 1346,
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`96 USPQ2d 1681, 1686 (Fed. Cir. 2010). RMI’s mark is strong by both measures. RED
`
`MANGO for restaurant and café services is presumed to be inherently distinctive because the
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`USPTO registered it without proof of secondary meaning and the mark RED MANGO does not
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`describe the registered goods and services. (SOF ¶¶ 12-15.) Granny’s Submarine Sandwiches,
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`Inc. v. Granny’s Kitchen, Inc., 199 U.S.P.Q. (BNA) 564, 567 (TTAB 1978).
`
`Furthermore, RMI’s RED MANGO marks have secondary meaning: RMI spends
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`hundreds of thousands of dollars annually in promoting its RED MANGO marks, has many
`
`millions of dollars in sales and as a result, the marks are well-known and recognized as denoting
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`services emanating exclusively from RMI – as evidenced by the widespread and unsolicited
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`media coverage of RMI’s goods and services. (SOF ¶7 and Counterstatement; Ex. 1.) Defendant
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`itself has admitted that RMI’s registered mark RED MANGO is “famous.” (SOF ¶ 8.)
`
`
`
`9
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`

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`Defendant’s admission that RED MANGO is “famous” is fatal to Defendant’s assertion
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`that RED MANGO is “weak” and entitled to only narrow protection. “Fame of the prior mark
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`plays a dominant role in likelihood of confusion cases featuring a famous mark. . . . [because]
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`extreme deference [is] accorded to a famous mark in terms of the wide latitude of legal
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`protection it receives.” L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 1437 (TTAB 2012). See
`
`also Bose Corp. v. QSC AudioProducts Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002);
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`Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000); Hard
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`Rock Cafe Int’l (USA), Inc. v. Elsea, 56 U.S.P.Q.2d 1504, 1514 (TTAB 2000) (finding likelihood
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`of confusion because fame of opposer’s mark increased scope of protection). Defendant’s
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`argument that RED MANGO is descriptive of “restaurant and café services” and thus weak is
`
`foreclosed by its admission that RED MANGO is “famous” for those services. A famous mark is
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`not “merely descriptive,” but instead a “strong” mark. See, e.g., Kenner Parker Toys, Inc. v.
`
`Rose Art Industries, Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992); Citigroup
`
`Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645, 1664 (TTAB 2010)
`
`(“Notwithstanding the various uses of “City Bank,” these uses do not diminish the strength of
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`opposer's [famous] mark [CITIBANK].”); USGA v. T-Golf LLC, Opp. No. 91174712, 2009 WL
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`4086581, *7 (TTAB Sept. 30, 2009) (“any asserted weakness in opposer's mark is overcome because
`
`opposer's U.S. OPEN mark is famous”); Bose, 293 F.3d at 1375 (“broad” protection afforded to
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`“famous” and “strong” marks).
`
`
`
`
`B.
`
`
`Defendant Has Conceded That Parties’ Services, Customers And
`Channels of Trade Are Identical
`
`
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`Four other DuPont factors strongly favor a finding of a likelihood of confusion and have
`
`been conceded by Defendant. Defendant has admitted that the parties offer identical services –
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`restaurant and café services offering frozen yogurt. (SOF ¶ 6.) Defendant has admitted that the
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`
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`10
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`

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`parties offer their services in the same trade channels and are targeting the same customers. (Id.)
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`Furthermore, Defendant has admitted that customers frequenting frozen yogurt cafes are unlikely
`
`to exercise a high level of care in choosing services, and thus are more likely to be confused by
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`similar marks, especially when used on identical services. (Id.) See Specialty Brands, Inc. v.
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`Coffee Bean Distributors, Inc., 748 F.2d 669, 672 (Fed. Cir. 1984). These factors support the
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`denial of Defendant’s motion and the granting of RMI’s cross motion for summary judgment on
`
`RMI’s Section 2(d) claim.
`
`C.
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`Defendant Admitted it That Knew of RMI’s “Famous” Mark Before
`Adopting its Mark
`
`
`
`Defendant has admitted that it knew of RMI’s RED MANGO mark and its services
`
`before it adopted its mark. (SOF ¶ 5.) When viewed in combination with Defendant’s
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`admissions that RMI’s RED MANGO mark is “famous” and that Defendant’s services are
`
`identical to RMI’s services, Defendant’s admission that it knew of RMI’s RED MANGO mark
`
`prior to adopting THE MELLOW MANGO mark supports a finding of bad faith. Defendant had
`
`an obligation to steer clear of RMI’s mark when choosing a name for its identical services. As
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`the TTAB has stated:“there is no excuse for even approaching the well-known trademark of
`
`a competitor inasmuch as ‘[a] strong mark...casts a long shadow which competitors must
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`avoid.’” L’Oreal, 102 U.S.P.Q. at 1438 (emphasis added) (citing Kenner Parker Toys, 22
`
`U.S.P.Q.2d at 1456). This factor supports the denial of Defendant’s motion for summary
`
`judgment and supports the entry of summary judgment in favor of RMI on its cross motion for
`
`summary judgment on its Section 2(d) claim.
`
`RMI believes that Defendant possesses evidence that would demonstrate that it applied
`
`for the mark in bad faith. This evidence would be discovered during Defendant’s deposition,
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`which Defendant refuses to attend. Long prior to Defendant’s filing of this motion, RMI noticed
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`11
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`

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`Defendant’s deposition on this topic, as well as a variety of other topics. (Bukrinsky Decl. ¶¶ 9-
`
`16 & Ex. 6 thereto.) However, Defendant refused to appear and instead sought summary
`
`judgment and to block the deposition from proceeding through the filing of a motion to suspend.
`
`(Id., ¶ 15.) The Board cannot properly award summary judgment in favor of Defendant without
`
`allowing RMI to take Defendant’s deposition to uncover evidence of Defendant’s intent to trade
`
`on the goodwill of RMI’s mark.
`
`D.
`
`
`Actual Confusion Evidence Would Most Likely be
`Possession
`
`in Defendant’s
`
`“[I]t is well established that actual confusion is not essential to establishing a likelihood
`
`
`
`thereof.” Delson Candy Co., Inc. v. W.R. Grace & Co., 162 U.S.P.Q. 414, 415 (TTAB 1969)
`
`(likelihood of confusion found even though no actual confusion over eight years of market use);
`
`Clear Choice Holdings LLC v. Implant Direct Int’l., Opp. No. 91190485, 2013 WL 5402082, *8
`
`(TTAB Aug. 26, 2013) (“the lack of evidence of actual confusion carries little weight.”). The
`
`absence of actual confusion is not probative where – as Defendant represents – Defendant’s
`
`locations are not in the same geographic area as RMI’s locations, and as a result there has thus
`
`far been little opportunity for confusion. (SOF ¶¶ 9-10.) See Gillette Canada Inc. v. Ranir
`
`Corp., 23 U.S.P.Q.2d 1768, 1774 (TTAB 1992) (absence of actual confusion is only relevant
`
`where there has been “appreciable and continuous use by applicant of its mark for a significant
`
`period of time in the same markets as those served by opposer under its marks”); Barbara's
`
`Bakery Inc. v. Landesman, 82 U.S.P.Q.2d 1283, 1287 (TTAB 2007) (the probative value of the
`
`absence of actual confusion depends upon there being a “significant opportunity for actual
`
`confusion to have occurred”).
`
`
`
`Furthermore, because Defendant is the junior user, and its cafes are localized in one small
`
`geographic area, any confusion is likely to take the form of communications by consumers and
`
`
`
`12
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`

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`others in the trade to Defendant’s cafes, e.g., a consumer visiting Defendant’s cafes and
`
`remarking to employees whether Defendant is connected with RMI or licensed by RMI, or
`
`remarking on Defendant’s THE MELLOW MANGO stores outside of North Carolina. RMI
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`believes that Defendant has information concerning actual confusion. Long prior to Defendant’s
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`filing of this motion, RMI noticed Defendant’s deposition to seek testimony regarding actual
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`confusion. Defendant refused to appear for the deposition, and instead filed this motion and
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`sought to block the deposition through a motion to suspend the proceedings. (Bukrinsky Decl. ¶
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`9 & Ex. 6 thereto.) The Board cannot award summary judgment to Defendant without allowing
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`RMI to interrogate Defendant on the issue of actual confusion and allowing RMI to supplement
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`its opposition.
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`E.
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`The Parties’ Marks are Similar
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`The crux of Defendant’s argument is that the marks RED MANGO and THE MELLOW
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`MANGO are so dissimilar that confusion is unlikely as a matter of law – despite the fact that
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`every other DuPont factor supports a finding of a likelihood of confusion as a matter of law or,
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`with respect to actual confusion, is neutral. Defendant has failed to carry its burden of proof on
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`this factor.
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`Defendant’s analysis of the marks’ similarity reflects a misunderstanding of the law: it
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`assumes that “mango” is descriptive (an incorrect assumption, as noted supra, pp.9-10, and infra,
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`pp. 19-23), and then proceeds to compare only the remaining portion of the marks – “red” versus
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`“the mellow”. Even if the “mango” portion of RMI’s mark was descriptive, the Board
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`nonetheless looks at the entire mark in determining similarity of the parties’ marks. Spice
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`Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1295 (C.C.P.A. 1974) (“Of paramount
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`interest is not the descriptive nature of SPICE, but the overall commercial impression derived by
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`viewing the marks in their entireties in determining whether a likelihood of confusion exists . . .
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`Arguments to the effect that one portion of a mark possesses no trademark significance leading
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`to direct comparison between only what remains is an erroneous approach.”). Thus, the proper
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`comparison of the marks is RED MANGO versus THE MELLOW MANGO. Moreover, the
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`marks must be compared as singly presented in the marketplace – the marks for the services do
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`not appear side by side in the marketplace. Thus, similarity must be judged by whether or not
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`someone who was familiar with RMI’s “famous” mark for restaurant services would, upon
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`encountering Defendant’s restaurant, believe that it was run by RMI or affiliated, associated with
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`or licensed by RMI. See, e.g., Spoons Restaurants Inc. v. Morrison, Inc., 23 U.S.P.Q.2d 1735,
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`1742 (TTAB 1991).
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`Contrary to Defendant’s argument, the marks RED MANGO and THE MELLOW
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`MANGO are sufficiently similar such that confusion is likely – particularly because RMI’s mark
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`is strong and “famous,” and the marks are for the identical services sold to the same customers in
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`the same channels of trade. See Hard Rock Cafe, 56 U.S.P.Q.2d at 1512 (“When marks would
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`appear on virtually identical goods or services, the degree of similarity necessary to support of
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`conclusion of likely confusion declines.”); Century 21 Real Estate Corp. v. Century Life of Am.,
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`970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (same). In Hard Rock Café – a case with
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`very similar facts – the applicant argued, as Defendant did here, that the parties’ marks were
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`different because the initial word in the marks were different. 56 U.S.P.Q.2d at 512. The Board
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`rejected that argument, stating, “it is well established that marks must be compared in their
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`entireties, and when we compare HARD ROCK CAFE and COUNTRY ROCK CAFE in this
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`manner, we find that they project very similar commercial impressions.” Id. The Board also
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`rejected the applicant’s argument that opposer’s mark was weak, stating that because opposer
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`had proved its mark was famous, “whatever the suggestive roots of the mark, it must now be
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`considered a strong mark which is deserving of a wide scope of protection.” Id. at 1513.
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`As in Hard Rock Café, the parties’ marks here are similar in sight, sound, and meaning.
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`In both marks, the noun and main emphasis of the mark is “mango,” and although the parties
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`combine “mango” with different descriptors, the commercial impression resulting from the
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`marks is the same commercial impression – one of fruitiness and freshness. Given the identity of
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`the parties’ goods and trade channels and the fame of RMI’s mark, consumers encountering
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`Defendant’s mark “would be likely to erroneously conclude that the [services] bearing those
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`marks come from the same source.” Bill Rivers Trailers, Inc. v. Thermo King Corp., 478 F.2d
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`1243, 1245 (C.C.P.A. 1973). See also Centraz Indus., Inc. v. Spartan Chemical Co., Inc., 77
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`U.S.P.Q.2d 1698 (TTAB Jan. 23, 2006) (“The test is not whether the marks can be distinguished
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`when subjected to a side-by-side comparison, but rather whether the marks are sufficiently
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`similar in terms of their overall commercial impression that confusion as to the source of the
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`goods offered under the respective marks is likely to result.”).
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`In other words, when a consumer familiar with RMI’s RED MANGO chain of frozen
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`yogurt shops encounters Defendant’s THE MELLOW MANGO yogurt shop – an establishment
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`providing the identical services as RMI – he is or she is likely to overlook the slight differences
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`in the marks and believe that Defendant’s establishment is affiliated with RMI. This was the
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`case in the TTAB’s decision in Spoons, where the Board held that the marks SPOONS and
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`SILVER SPOON CAFE for restaurant services were confusingly similar, despite the differences
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`in the sound and appearance of the marks, and the applicant’s argument that the expression
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`“silver spoon” had an additional meaning of “refinement, sophistication, and high quality” that
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`differentiated it from opposer’s SPOONS mark. 23 U.S.P.Q.2d at 1740-42. The Board denied
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`registration to the applicant of SILVER SPOON CAFÉ, stating, “we believe that due regard for
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`the fallibility of human memory and the propensity to recollect only the general aspects of marks
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`necessitates a finding that applicant's and opposer's marks are confusingly similar when applied
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`to identical services.” Id. at 1741. The case at bar – where the marks are RED MANGO and
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`THE MELLOW MANGO for identical services – should be guided by the precedent of Spoons
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`and Hard Rock Café.
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`F.
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`Defendant’s Evidence of Third-Party Use is Unpersuasive
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`In support of this factor, Defendant presents third-party registrations for restaurant
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`services for marks that include the word “mango.” “The purpose of a defendant introducing
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`third party uses is to show that customers have become so conditioned by a plethora of such
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`similar marks that customers have been educated to distinguish between different such marks on
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`the bases of minute distinctions.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
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`Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689, 1694 (Fed. Cir. 2005). Defendant has
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`failed to prove that this factor weighs in its favor.
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`Defendant’s evidence consists of printouts of third-party registrations from the USPTO
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`website, and an affidavit from an investigator that she called these establishments one time and
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`heard some of them answer the phone by saying “mango.” (See Exs. K & L to Def’s Motion.)
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`Defendant has presented no evidence regarding “the length of time said marks have been in use,
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`the degree of exposure, or the popularity of such marks vis-à-vis the relevant purchasing public.”
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`Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 U.S.P.Q.2d 1163 (TTAB 2011);
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`see also GS Enterprises LLC v. Juice Generation, Inc., Opp. No. 91206450, 2014 WL 2997639,
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`*7 (TTAB June 18, 2014) (“there are no specifics regarding the extent of sales or promotional
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`efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in
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`the minds of the purchasing public. Accordingly, we are unable to find that customers have
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`become conditioned to recognize that other entities use PEACE AND LOVE marks for similar
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`services.”). For this reason, these registrations should be given little or no weight. See, e.g.
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`Under Armour, Inc. v. Hot Gear LLC, Opp. No. 91173897, 2009 WL 871663, *5 (TTAB Mar.
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`9, 2009) (“little weight is to be given such registrations in evaluating whether there is likelihood
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`of confusion. The existence of these registrations is not evidence of what happens in the mark