IP Law Daily, TRADEMARK—TTAB: Del Monte’s proposed mark FRSHST was likely to cause confusion with FRESH STREET SQUARE mark, (Jan 7, 2022)

By Kevin M. Finson, J.D.

A likelihood of confusion existed between the proposed mark FRSHST and the registered mark FRESH STREET SQUARE because they were very similar and covered overlapping and related services in related trade channels.

A trademark examining attorney properly refused to register two marks containing the word “FRSHST” for use with food and beverage kiosk and other services, but expressly excluding “supermarkets,” on the ground of likelihood of confusion with the mark FRESH STREET SQUARE, registered in connection with supermarkets, the Trademark Trial and Appeal Board has held. The marks were very similar in sound, connotation, and commercial impression, and covered similar services in related trade channels with overlapping classes of consumers (In re Del Monte International GmbH, January 5, 2022, English, C.).

Del Monte International GmbH (Del Monte) sought registration on the Principal Register of two marks containing the word “FRSHST” for use with “food and beverage kiosk services; retail store services featuring fresh fruits and vegetables, sandwiches, wraps, baked goods, salads, snacks, entrees, prepared meals, dips, hummus, soups and yogurts; all of the foregoing excluding supermarkets” in International Class 35. The Examining Attorney refused registration to both marks on the grounds of likelihood of confusion with the registered standard character mark FRESH STREET SQUARE, with “FRESH” disclaimed, for “supermarkets” in International Class 35. Del Monte appealed, and the Board applied the DuPont factors for which there was evidence of record.

Similarity of the marks. The Examining Attorney argued that the literal element of both marks was the word “Fresh”, albeit with the vowel removed, with the superscript ST indicating “Street”. Del Monte argued that it could be interpreted as “Freshest”, but the Board held that the existence of another possible interpretation did not make this most readily apparent interpretation any less confusing. The additional word “Square” in the registered mark did provide some differentiation, but it also simply reinforced the word “street,” as one definition of a square is an open area formed by the meeting of two streets. The Board held that the marks were very similar in sound, connotation, and commercial impression, so this factor weighed in favor of a finding of confusion.

Similarity of services, channels of trade, and classes of consumers. Del Monte argued that because it expressly excluded “supermarkets” from its list of services, there was no overlap. The Board held that the services described in Del Monte’s application were simply a subset of the larger “supermarket” which encompassed the sale of those goods identified by Del Monte. The services were also highly related because supermarkets often contain food kiosks or other hot food offerings. The channels of trade were related because, although Del Monte argued that its kiosks were “standalone” kiosks not found in supermarkets, the application contained no such limitation. Likewise, there was no limitation on the classes of consumer in either the registration or application, so the Board determined that the relevant class of consumer for both was members of the public purchasing food. These factors all supported a finding of confusion.

Finding that all the relevant factors supported a likelihood of confusion, the Board affirmed the refusal to register.

The case is Serial Nos. 88614478 and 88696297.

Attorneys: Nicole M. Meyer (Dickinson Wright PLLC) for Del Monte International GmbH. Susan K. Lawrence for the USPTO.

Companies: Del Monte International GmbH

Cases: Trademark GCNNews USPTO