Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1194114
`
`Filing date:
`
`03/02/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91265174
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Eden Foods, Inc.
`
`CHRISTOPHER KELLY
`WILEY REIN LLP
`1776 K STREET, N.W.
`WASHINGTON, DC 20006
`UNITED STATES
`Primary email: ckelly@wiley.law
`Secondary email(s): bdavis@wiley.law, tmdocket@wiley.law
`202-719-7000
`
`Brief on Merits for Plaintiff
`
`Christopher Kelly
`
`ckelly@wiley.law
`
`/Christopher Kelly/
`
`03/02/2022
`
`ADAM_EDEN FORMULATIONS Trial Brief.pdf(280172 bytes )
`Trial Exhibit 1.pdf(256364 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`EDEN FOODS, INC.,
`
`
`
`Opposer,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`SMOOTH LOUNGE,
`
`
`Applicant.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opp. No.:
`Serial No.:
`Mark:
`
`
`
`91/265,174
`88/888,081
`ADAM & EDEN
`FORMULATIONS
`
`OPPOSER’S MAIN BRIEF IN SUPPORT OF OPPOSITION
`
`
`
`
`
`
`
`
`
`Christopher Kelly
`Adrienne J. Kosak
`Wiley Rein LLP
`2050 M Street, N.W.
`Washington, D.C. 20036
`202-719-7000
`
`ATTORNEYS FOR OPPOSER
`
`Filed: March 2, 2022
`
`

`

`
`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...............................................................................................................1 
`
`DESCRIPTION OF THE RECORD ...................................................................................2 
`
`A. 
`
`B. 
`
`C. 
`
`Evidence Submitted By Opposer .............................................................................2 
`
`Evidence Submitted by Applicant ...........................................................................2 
`
`Evidence Automatically of Record ..........................................................................3 
`
`III. 
`
`STATEMENT OF FACTS ..................................................................................................3 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`Origins of Eden Foods and Its Marks ......................................................................3 
`
`Opposer’s Family of EDEN Marks..........................................................................3 
`
`Opposer’s Current Product Offerings ......................................................................5 
`
`Opposer’s Trade Channels .......................................................................................7 
`
`Publicity for Opposer’s Products .............................................................................8 
`
`Opposer’s Enforcement History ............................................................................10 
`
`The Application .....................................................................................................11 
`
`IV. 
`
`ARGUMENT .....................................................................................................................12 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Opposer’s EDEN Marks Are Distinctive and Strong Family of Marks,
`Entitled to a Broad Scope of Protection. ................................................................14 
`
`1.
`
`2.
`
`The EDEN Marks Constitute a Family of Marks. .................................... 14
`
`The EDEN Marks, Either Alone or as Part of a Family, Are Distinctive
`and Strong. ................................................................................................ 17
`
`Opposer’s and Applicant’s Goods Are Legally Identical. .....................................18 
`
`The Parties’ Respective Marks Are Confusingly Similar. .....................................24 
`
`The Established, Likely to Continue, Trade Channels Are Identical. ...................28 
`
`Opposer’s Marks Are Used on a Wide Variety of Goods. ....................................29 
`
`Other duPont Factors Are Not Relevant or Are Neutral. .......................................30 
`
`V. 
`
`CONCLUSION ..................................................................................................................30 
`
`i
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`7-Eleven, Inc. v. Wechsler,
`83 U.S.P.Q.2d 1715 (TTAB 2007) ..........................................................................................15
`
`Allmax Nutrition Inc. v. Stronghold Inc.,
`No. 91229071, 2018 WL 2277919 (TTAB May 16, 2018) .....................................................21
`
`In re Azteca Restaurant Enter., Inc.,
`50 U.S.P.Q.2d 1209 (TTAB 1999) ..........................................................................................13
`
`Black & Decker Corp. v. Emerson Elec. Co.,
`84 U.S.P.Q.2d 1482 (TTAB 2007) ....................................................................................15, 19
`
`Bose Corp. v. QSC Audio Prods., Inc.,
`293 F.3d 1367 (Fed. Cir. 2002)................................................................................................17
`
`Century 21 Real Est. Corp. v. Century Life of Am.,
`970 F.2d 874 (Fed. Cir. 1992)..................................................................................................27
`
`In re Chatam Int’l Inc.,
`380 F.3d 1340 (Fed. Cir. 2004)................................................................................................26
`
`Cunningham v. Laser Golf Corp.,
`222 F.3d 943 (Fed. Cir. 2000)......................................................................................24, 25, 26
`
`In Re Cuup, Inc.,
`No. 88326435, 2021 WL 3675108 (TTAB July 26, 2021) ......................................................26
`
`In re E.I. duPont DeNemours & Co.,
`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ......................................................... passim
`
`Eden Foods, Inc. v. Biensen,
`No. 91202409, 2016 WL 10571080 (TTAB May 20, 2016) .......................................16, 18, 27
`
`Eden Foods, Inc. v. Brenkwitz,
`No. 91151474, 2005 WL 1526131 ..............................................................................16, 18, 27
`
`Federated Foods, Inc. v. Fort Howard Paper Co.,
`544 F.2d 1098, 192 U.S.P.Q. 24 (C.C.P.A. 1976) ...................................................................13
`
`In Re Franklin Creative Sols., LLC,
`No. 87517906, 2020 WL 3027597 (TTAB Apr. 30, 2020) .....................................................26
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`
`In re G.B.I. Tile & Stone Inc.,
`92 U.S.P.Q.2d 1366 (TTAB 2009) ..........................................................................................22
`
`Genesco Inc. v. Martz,
`66 USPQ2d 1260 (TTAB 2003) ..............................................................................................28
`
`Hewlett-Packard Co. v. Packard Press, Inc.,
`281 F.3d 1261 (Fed. Cir. 2002)................................................................................................26
`
`In Re Infinity Broad. Corp. of Dall.,
`60 U.S.P.Q.2d 1214 (TTAB 2001) ..........................................................................................22
`
`J & J Snack Foods Corp. v. McDonald’s Corp.,
`932 F.2d 1460 (Fed. Cir. 1991)................................................................................................14
`
`In Re Joanna Lynn,
`No. 76470354, 2005 WL 548049 (TTAB Mar. 1, 2005) .........................................................24
`
`Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC,
`703 F. Supp.2d 777 (N.D. Ill. 2010) ........................................................................................25
`
`Marion Lab’ys Inc. v. Biochemical/Diagnostics Inc.,
`6 U.S.P.Q.2d 1215 (TTAB 1988) ............................................................................................14
`
`In Re Marthe Dare, D.B.A. Dare Enters.,
`No. 75/026,172, 1999 WL 1004625 (Oct. 29, 1999) ...............................................................19
`
`Massage Heights IP LLC v. Trucore Distribs.,
`No. 91249495, 2021 WL 1187136 (TTAB Mar. 25, 2021) .....................................................21
`
`McDonald’s Corp v. McBagel’s Inc.,
`649 F. Supp. 1268 (S.D.N.Y. 1986) .........................................................................................15
`
`McDonald’s Corp. v. McKinley,
`13 U.S.P.Q.2d 1895 (TTAB 1989) ....................................................................................28, 29
`
`In re McWilliams,
`200 U.S.P.Q. 47 (TTAB 1978) ................................................................................................27
`
`Mobay Chem. Co. v. Standard Oil Co.,
`163 U.S.P.Q. 230 (TTAB 1969) ..............................................................................................19
`
`Mother’s Rests., Inc. v. Mother’s Other Kitchen, Inc.,
`218 U.S.P.Q. 1046 (TTAB 1983) ............................................................................................27
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`
`In re Mucky Duck Mustard Co.,
`6 U.S.P.Q.2d 1467 (TTAB 1988) ............................................................................................24
`
`In re Nat’l Data Corp.,
`753 F.2d 1056 (Fed. Cir. 1985)................................................................................................24
`
`Quality Inns Int’l, Inc. v. McDonald’s Corp.,
`695 F. Supp. 198 (D. Md. 1988) ..............................................................................................25
`
`Salesforce.com, Inc. v. Wendell,
`No. 91237941, 2020 WL 7861236 (TTAB Dec. 17, 2020) .....................................................26
`
`In re Schel,
`No. 77756102, 2011 WL 5873327 (TTAB Nov. 3, 2011) ......................................................19
`
`Schering-Plough Health Care Prods. Inc. v. Ing-Jing Huang,
`84 U.S.P.Q.2d 1323 (TTAB 2007) ......................................................................................9, 30
`
`In re Smith and Mehaffey,
`31 USPQ2d 1531 (TTAB 1994) ..............................................................................................28
`
`Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP,
`746 F.3d 1317 (Fed. Cir. 2014)................................................................................................26
`
`Tektronix, Inc. v. Daktronics, Inc.,
`534 F.2d 915, 189 U.S.P.Q. 693 (C.C.P.A. 1976) ...................................................................26
`
`THOIP v. Walt Disney Co.,
`736 F.Supp.2d 689 (S.D.N.Y. 2010) ........................................................................................14
`
`Tiffany & Co. v. Classic Motor Carriages, Inc.,
`10 U.S.P.Q.2d 1835 (TTAB 1989) ..........................................................................................29
`
`Titmouse, Inc. v. Dickerson,
`No. 9206651, 2019 WL 2188739 (TTAB May 16, 2019) .......................................................26
`
`In Re Trac Distrib. Inc.,
`No. 85621173, 2015 WL 910205 (Feb. 13, 2015) ...................................................................20
`
`In re Tray-Pak Corp.,
`No. 78329105, 2010 WL 3798515 (TTAB Sept. 16, 2010) ..............................................21, 22
`
`Uncle Ben’s Inc. v. Stubenberg Int’l, Inc.,
`47 U.S.P.Q.2d 1310 (TTAB 1998) ..........................................................................................30
`
`iv
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`
`In re Viterra Inc.,
`671 F.3d 1358 (Fed. Cir. 2012)................................................................................................25
`
`Statutes
`
`15 U.S.C. § 1052(d) .......................................................................................................................12
`
`Trademark Act of 1946 Section 2(d) .......................................................................................12, 23
`
`Other Authorities
`
`J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
`23:61 (4th ed. 2011) ...............................................................................................15, 17, 25, 27
`
`
`
`
`v
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Opposer Eden Foods, Inc. (“Opposer” or “Eden Foods”) respectfully submits this brief in
`
`support of its Opposition to registration of Application Ser. No. 88/888,081 (“the Application”)
`
`for the mark ADAM & EDEN FORMULATIONS, covering “Dietary supplements; Herbal
`
`supplements; Mineral supplements; Nutritional supplements; Vitamin supplements,”
`
`in
`
`International Class 005, filed by Applicant Smooth Lounge (“Applicant”). Eden Foods opposes
`
`registration of Applicant’s mark because it so closely resembles Opposer’s registered marks
`
`consisting in whole or part of the term EDEN that, when applied to the goods identified in the
`
`application, it is likely to cause confusion or mistake or deceive the public into falsely believing
`
`that Applicant’s goods are in some way affiliated or associated with, sponsored by, or emanate
`
`from Eden Foods.
`
`As explained in detail below, Eden Foods has spent decades developing and promoting a
`
`wide variety of highly regarded food- and beverage-related goods and services, including in the
`
`fields of ingestible supplements and other wellness products. In conjunction therewith, Eden
`
`Foods has developed a strong family of marks based around the formative EDEN. Applicant has
`
`wholesale adopted the common element of that family of marks, and intends to use it to market
`
`products that directly overlap with and are innately related to Eden Foods’ broad food- and
`
`beverage-related offerings. In light of the identical goods and common use of the formative
`
`EDEN, in which Eden Foods has developed strong trademark rights entitled to a broad scope of
`
`protection, consumers are likely to be confused by Applicant’s mark. Moreover, the additional
`
`elements of Applicant’s mark fail to distinguish it meaningfully, as Applicant admits that the non-
`
`descriptive portion intentionally evokes the same commercial impression as Eden Foods’ marks.
`
`Eden Foods respectfully submits that consumer confusion is not only likely, but nearly inevitable.
`
`The Application, therefore, should be refused in light of Eden Foods’ family of EDEN marks.
`
`
`
`
`
`

`

`
`
`II.
`
`DESCRIPTION OF THE RECORD
`
`A.
`
`Evidence Submitted By Opposer
`
` Testimony Declaration of Michael J. Potter, Chairman and President of Opposer
`(“Potter Decl.”), and Exhibits A through M thereto (“Potter Decl. Ex.”).
`
` Rebuttal Testimony Declaration of Michael J. Potter, Chairman and President of
`Opposer (“Potter Rebuttal Decl.”), and Exhibits 1 and 2 thereto (“Potter Rebuttal
`Decl. Ex.”).
`
` Opposer’s First Notice of Reliance (“Opp. NoR 1”): Discovery documents
`produced by Applicant to Opposer, specifically (1) Applicant’s Supplemental
`Responses to Opposer’s First Set of Interrogatories; (2) Applicant’s Responses to
`Opposer’s Second Set of Interrogatories; and (3) the transcript of and exhibits to
`the discovery deposition of Jeff Robbins.
`
` Opposer’s Second Notice of Reliance (“Opp. NoR 2”): Third-party websites
`demonstrating that Opposer’s products and services and Applicant’s products are
`marketed in the same channels of trade.
`
` Opposer’s Third Notice of Reliance (“Opp. NoR 3”): Third-party registrations
`demonstrating the relatedness of Opposer’s products and services and Applicant’s
`products.
`
` Opposer’s Fourth Notice of Reliance (“Opp. NoR 4”): Third-party websites
`demonstrating the lack of probative value of Applicant’s trial evidence.
`
`B.
`
`Evidence Submitted by Applicant
`
` Applicant’s First Notice of Reliance (“App. NoR 1”): Third-party registrations
`purportedly relating to the strength of Opposer’s marks.
`
` Applicant’s Second Notice of Reliance (“App. NoR 2”): Third-party registrations
`purportedly demonstrating relatedness of Applicant’s and Opposer’s goods to the
`goods relevant to App. NoR 1;
`
` Applicant’s Third Notice of Reliance (“App. NoR 3”): Third-party registrations
`purportedly demonstrating relatedness of Applicant’s goods to the goods relevant
`to App. NoR 1;
`
` Applicant’s Fourth Notice of Reliance (“App. NoR 4”): Third-party registrations
`purportedly relating to the strength of Opposer’s marks.
`
` Applicant’s Fifth Notice of Reliance (“App. NoR 5”): Third-party registrations
`purportedly demonstrating relatedness of Opposer’s goods to the goods relevant to
`App. NoR 4;
`
`2
`
`

`

`
`
` Applicant’s Sixth Notice of Reliance (“App. NoR 6”): Third-party websites
`purportedly relating to the strength of Opposer’s marks.
`
`C.
`
`Evidence Automatically of Record
`
` The opposed Application, Application Ser. No. 88/888,801.
`
`III.
`
`STATEMENT OF FACTS
`
`A.
`
`Origins of Eden Foods and Its Marks
`
`Eden Foods is an institution of the food service industry. The company began over fifty
`
`years ago as a food cooperative in Ann Arbor, Michigan, using the name EDEN. Potter Decl. ¶ 4.
`
`Eden Foods was organized by people interested in developing natural and healthy alternatives to
`
`the common commercial food products. Id. The cooperative proved so popular that Eden Foods
`
`soon opened a natural food retail store, also under the name EDEN. Id. The store, too, proved
`
`popular, attracting all types of consumers, and demonstrating a strong demand for natural and
`
`healthy food products. Id. ¶¶ 4-5. In light of this demand, Eden Foods began branding its own
`
`products under the EDEN trademark in 1968, giving birth to Eden Foods as it is known today. Id.
`
`¶ 5. Since that time, Eden Foods has operated continuously, and has used the EDEN trademark
`
`and brand name without interruption. Id.
`
`B.
`
`Opposer’s Family of EDEN Marks
`
`Over the last fifty years, Opposer has developed and adopted a family of EDEN marks that
`
`incorporate or are derived from the EDEN brand name. For example, Opposer has used the marks
`
`EDENSOY, EDEN ORGANIC, EDENEWS, EDEN RECIPES, and EDEN STORE to identify its
`
`products. Id. ¶¶ 7, 31, Ex. A. Further, Opposer is currently using the mark MRS. EDEN’S
`
`KITCHEN through a licensee. Id. ¶ 7. Some of the EDEN family of marks are the subject of U.S.
`
`registrations, including:
`
` Reg. No. 1,440,754 – EDENSOY for soybean based food beverages, registered on the
`Principal Register May 26, 1987.
`
`3
`
`

`

`
`
` Reg. No. 1,452,337 – EDEN for pickled plums; processed and unprocessed dried fruits;
`processed nuts; processed seeds; vegetable oils; namely, corn oil, olive oil, safflower oil,
`sesame oil; snack foods consisting of processed nuts, processed seeds and dried fruits;
`processed grains, namely, corn meal, soy flour, chickpea flour, barley flour, wheat flour,
`buckwheat flour, millet flour, rice flour, rye flour; pasta, namely, wheat noodles, wheat
`and egg noodles, wheat and soy noodles, wheat and spinach noodles, wheat and
`buckwheat noodles; soy sauce; barley malt syrup for table use; vinegar; mustard; tomato
`based spaghetti sauce; sea salt for table use; beverage consisting of tea and herbs;
`unprocessed beans, namely, aduki, black turtle beans, kidney beans, great northern beans,
`green lentils, mung beans, navy beans, pinto beans, soy beans; unprocessed peas, namely,
`chickpeas, split peas; unprocessed nuts; unprocessed edible seeds; unprocessed grains,
`namely barley, rice, wheat, buckwheat and millet; unprocessed corn and unpopped
`popcorn; unprocessed sea vegetables, namely sea weed, registered on the Principal
`Register August 11, 1987.
` Reg. No. 1,862,634 – EDEN for vegetable oils, crushed tomatoes, sauerkraut, and
`processed canned beans; pasta; pizza sauce; teas; crackers; chips; misos; and condiments;
`namely, mustard, sea salt, processed sesame seeds, garlic pastes, furikake, pickled
`beefsteak leaf powder, bonito flakes, pickled ginger, tekka, wasabi powder, tamari, and
`shoyu; unprocessed grains; namely, barley, wheat and quinoa, registered on the Principal
`Register November 15, 1994.
` Reg. No. 2,229,053 – EDEN for fruit butter, fruit sauce and fruit juices, registered on the
`Principal Register March 2, 1999.
` Reg. No. 2,503,977 – EDEN for dietary food supplements, namely, edible kombu root
`seaweed, garlic balls and ume plum concentrate, registered on the Principal Register
`November 6, 2001.
` Reg. No. 2,905,671 – EDENEWS for newsletters in the field of food and food related
`topics, nutrition, health and diet, farming and agricultural and environmental issues,
`registered on the Principal Register November 30, 2004.
` Reg. No. 2,977,773 – EDEN for processed popcorn for popping, registered on the
`Principal Register July 26, 2005.
` Reg. No. 3,102,575 – EDEN for dried cherries, registered on the Principal Register, June
`13, 2006.
` Reg. No. 4,065,063 – EDEN for providing recipes and information in the field of cooking
`and food preparation; providing information in the field of health, nutrition, diet, beauty
`and organic farming techniques, registered on the Principal Register, December 6, 2011.
` Reg. No. 4,171,490 – EDENEWS for downloadable electronic newsletters in the field of
`food and food-related topics, nutrition, heath and diet, farming and agricultural and
`environmental issues, registered on the Principal Register, July 10, 2012.
` Reg. No. 4,264,567 – EDEN STORE for retail and on-line store featuring food and
`beverage products, registered on the Principal Register, December 25, 2012.
`
`4
`
`

`

`
`
` Reg. No. 4,264,570 – EDEN for retail and on-line store featuring food and beverage
`products, registered on the Principal Register, December 25, 2012.
` Reg. No. 4,336,312 – EDEN RECIPES for downloadable software in the nature of an
`application for obtaining news and information in the field of food and food related topics,
`nutrition, health and diet and related textual, audio and video content on mobile and
`stationary electronic devices, registered on the Principal Register, May 14, 2013.
`
` Reg. No. 4,431,041 – EDEN for tooth powder; dietary food supplements and nutritional
`supplement concentrates; sushi mats; processed vegetables; chili; processed mushrooms;
`raisins; tofu; vegetable based food beverages; prepared entrees consisting primarily of
`beans with rice and other side dishes; Umeboshi plum paste; grain based food beverages;
`natural food sweeteners; arrowroot for use as a food thickener; rice; Ponzu sauce; prepared
`entrees consisting primarily of rice with beans and other side dishes; edible spices;
`concentrates for making non-alcoholic beverages; and cooking wine, registered on the
`Principal Register November 12, 2013.
`
` Reg. No. 6,138,923 – EDEN for gift baskets and bags primarily containing soup and also
`including a ceramic soup cup; gift baskets and bags primarily containing fruit butters, fruit
`sauces and dried fruits; processed seeds for snacking; processed beans and gift baskets
`and bags primarily containing tea powder and also including a whisk, spoon and bowl;
`gift baskets and bags primarily containing organic teas and also including an infuser spoon
`and mug; gift baskets and bags primarily containing popcorn and also including a popcorn
`bowl; pasta and pasta sauce; processed seeds for use as seasoning; condiments, namely,
`ketchup, mustard, and mayonnaise, registered on the Principal Register September 1,
`2020.
`
`Id. ¶ 31 and Ex. L.
`
`As shown above, Opposer uses the principal formative term EDEN in conjunction with a
`
`multitude of “secondary definers,” such as EDEN ORGANIC, EDEN FOODS, and EDEN
`
`RECIPES. Id. Opposer also owns unitary marks containing the formative EDEN, such as
`
`EDENSOY and EDENEWS. Id.
`
`C.
`
`Opposer’s Current Product Offerings
`
`Opposer long ago left behind its modest beginnings, quickly growing into a leading
`
`manufacturer, producer, and distributor of natural and organic food and beverage products. Id.
`
`¶ 6. At present, Opposer offers approximately 300 products, with many more under consideration.
`
`5
`
`

`

`
`
`Id. and Ex. A. Each of these products is offered under the EDEN brand name, and is sold with
`
`product labels and packaging that bears EDEN marks. Id.
`
`Among Opposer’s current offerings are natural products specifically geared toward health
`
`and wellness, including products identified as “dietary food supplements and nutritional
`
`supplement concentrates” and “dietary food supplements, namely, edible kombu root seaweed,
`
`and ume plum concentrate” in Opposer’s registrations. Id. Ex. L (Reg. Nos. 2,503,977 and
`
`4,431,041). These supplement products are marketed to emphasize their health benefits
`
`particularly, including as possessing an “abundance of essential minerals [and] vitamins,”
`
`“foster[ing] well-being and acid-alkaline balance,” “stimul[ating] of the Krebs Citric Acid Cycle,”
`
`acting as a “digestive aid” and acting as a “catalyst in the absorption of minerals.” Id. ¶ 10, Ex. C
`
`at 128, 177-86.1 Many other of Opposer’s products are also well-known and/or promoted by
`
`Opposer for their health benefits, including Opposer’s green and twig tea (promoted for its high
`
`levels of antioxidants), lotus root tea (promoted for its health benefits including lung health and as
`
`a “macrobiotic staple”), Mu 16 herb tea (a combination of 16 herbs specifically selected for their
`
`medicinal properties); matcha (promoted for its benefits to “mental concentration, emotional
`
`stability, composure of mind, and physical well-being”), turmeric (commonly used as an anti-
`
`inflammatory and for antioxidants), fenugreek powder (commonly used to increase lactation), and
`
`dandelion root concentrate (promoted for its ability to “promote healthy digestion”). Id. ¶ 10, Ex.
`
`C.
`
`In addition to these current products, Eden Foods has, in the recent past, offered products
`
`such as orally ingested enzymes, minerals, vitamins, and food digestion tablets. Id. ¶ 11. And
`
`
`1 Page numbers refer to the pages of the full document as it appears on TTABVUE.
`
`6
`
`

`

`
`
`among its currently contemplated product expansions are topical and pet supplements, to be sold
`
`under the EDEN name. Id.
`
`Complementing its consumable products, Opposer also offers a variety of cooking and
`
`kitchenware items, including whisks, spoons, sushi mats, mugs, and bowls, which are sold under
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`the EDEN name either individually or as part of gift bags and baskets. Id. ¶ 12, Ex. D.
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`Opposer’s offerings extend beyond just food- and beverage-related products, into services
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`to promote health and wellness. Opposer offers a newsletter with a significant subscription base
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`(60,000 subscribers per month) specifically geared toward nutrition, health, and wellness under
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`the EDENEWS mark. See id. ¶ 19, Exs. G, L (Reg. No. 2,905,671). Opposer also makes available
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`recipes, including through its website on which consumers can filter recipes by dietary and health
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`considerations. See id. ¶ 18, Exs. F, L (Reg. No. 4,336,312). Opposer also operates a retail and
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`ecommerce store under the EDEN name. Id. ¶ 9 and Exs. B, L (Reg. Nos. 4,264,567, 4,264,570).
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`In addition to the products manufactured, produced, and distributed by Opposer, Opposer
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`has licensed the EDEN name for use in connection with restaurants. For instance, Opposer has
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`allowed the grocery store chain Whole Foods to use EDEN to identify a restaurant located within
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`at least one of its stores. Id. ¶ 8.
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`Opposer’s EDEN brand products are now sold in every state in the United States and
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`internationally. Id. ¶ 13.
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`D.
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`Opposer’s Trade Channels
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`Opposer’s products are sold in all normal trade channels for its goods, and are sold to all
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`classes of customers. Id. ¶ 14. The products are sold to national, regional, and local wholesalers
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`and distributors; to numerous large and well-known retail grocery stores including Harris Teeter,
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`Giant, Safeway, Trader Joe’s, Wegman’s, Publix, Kroger’s, and Albertsons; to regional and local
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`food stores; and to natural food and specialty stores. Id.
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`In addition to these brick-and-mortar stores, Opposer has sold its products to both
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`professional purchasers and ultimate consumers over the Internet since the 1990s. Opposer’s
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`products can be found at EdenFoods.com, Amazon.com, and through websites operated by various
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`independent retail stores and chains that carry EDEN brand foods. Id. ¶ 15. Additionally,
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`Opposer’s products are sold to professional purchasers through Internet outlets restricted to
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`business-to-business purchasers. Id. Opposer’s products are also available through mail order
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`outlets. Id. ¶ 14.
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`E.
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`Publicity for Opposer’s Products
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`Opposer employs a number of methods to advertise and promote its products. These
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`methods include:
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` A product catalog, id. ¶ 17, Ex. A;
` Print advertisements in magazines and other publications, id. ¶ 17, Ex. E;
` Distribution of over 1,000 recipes that highlight the potential uses for Opposer’s
`products through the edenfoods.com website, brochures and booklets, and an app called
`EDEN RECIPES, id. ¶ 18, Ex. F;
` The EDENEWS newsletter that reaches approximately 60,000 subscribers monthly and
`is available to many more online through Opposer’s website, id. ¶ 19, Ex. G;
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`
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`Internet banner advertisements, shelf-talkers, point-of-sale materials, and collateral
`promotional materials, id. ¶ 20, Ex. H;
` Cooking demonstrations and other in-store promotional activities, id. ¶ 20;
` Radio, television, and social media promotion, including partnerships with television
`programs, sponsorships of television and radio programs, and social media influencer
`campaigns, id. ¶ 22;
` Trade show promotions, including exhibits, distribution of printed materials, display
`and distribution of promotional videos, and display and distribution of sample products,
`id. ¶ 23;
` Marketing through edenfoods.com, which has been in operation since the 1990s and
`contains marketing materials and advertisements, and which generates significant
`Internet traffic (e.g., millions of page views and two million unique visitors from
`September 2019 to September 2020), id. ¶ 24, Ex. I; and
` Social media platforms including Facebook, Twitter, Pinterest, LinkedIn, and
`Instagram, id. ¶ 25, Ex. J.
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`Many of Opposer’s advertising and promotional materials feature multiple EDEN brand
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`products—an intentional choice, as part of Opposer’s marketing strategy. Id. ¶ 21. The intention
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`is to communicate to the public the idea of the EDEN brand—that all of the various EDEN
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`products like EDEN, EDENSOY, EDEN ORGANIC, and EDEN SELECT are all products of
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`Eden Foods. Id.
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`Opposer invests significant resources in advertising and promoting its products. Opposer’s
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`annual advertising and marketing expenditures are in the millions of dollars (compared to annual
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`retail sales for EDEN brand products that consistently exceed $100 million). Id. ¶ 28.
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`In addition to Opposer’s robust advertising and promotion efforts, Opposer and its products
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`receive significant gratuitous publicity. For instance, Opposer’s products have been featured by
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`Good Morning America, Los Angeles Times, New York Times, People, Health, Men’s Health, Real
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`Simple, and Rachael Ray Everyday, to name only a few. Id. ¶ 26. Opposer’s products have also
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`been featured in film and television product placements, including the Lifetime movie “Random
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`Acts of Christmas,” the feature film “Hustlers,” and the television program “The Office.” Id.
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`Opposer’s products are also featured in publications and websites related to healthy eating. Id.
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`¶ 27.
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`Opposer’s products have also received significant recognition for their quality and
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`excellence. The EDEN brand products frequently appear in the “Best Brands” recommendation
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`on HealingGourmet.com, a website developed by health, fitness, and nutrition experts. Id. ¶ 27.
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`Further, the EDEN brand products have won numerous awards, including the Lausanne Index
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`Prize for environmental responsibility in 2021, Taste of Life magazine’s “Essential Award” and
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`“Back-to-School Essential Award” in both 2021 and 2018; Men’s Health magazine’s “Best Foods
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`for Men” award in 2017; and Gourmet Retailer magazine’s “Best New Product” award in 2016,
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`just to name a few. Id. ¶ 29, Ex. K (describing numerous other awards not specifically included
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`here).
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`The EDEN name has acquired a high level of consumer recognition and is a strong mark,
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`as shown by Opposer’s longstanding use of the mark, its advertising and promotional activities
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`and expenditures, and its robust sales. Id. ¶ 30.
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`F.
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`Opposer’s Enforcement History
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`The EDEN name is Opposer’s most important corporate asset, and Opposer strives to
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`protect its trademark rights. Id. These eff