IP Law Daily, TRADEMARK—TTAB: ‘PLUM’ mark for vegan packaged foods and restaurant services denied registration, (Aug 8, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Board found likelihood of confusion with opposer’s pre-registered, incontestable, and inherently distinctive PLUM MARKET mark for similar goods and services.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) sustained an opposition filed by a grocery retail company against an individual’s trademark application for the standard character trademark PLUM. The Board concluded that the individual’s use of the mark would likely cause confusion with the opposer's pre-existing PLUM MARKET (standard characters, “Market” disclaimed) trademark for similar goods and services (Jonna Markets, LLC v. Howell, No. 91249325 (T.T.A.B. July 30, 2024)).

The opposer, Jonna Markets, LLC, operates retail grocery stores, supermarkets, and delicatessen services under the trademark PLUM MARKET. On the other hand, the applicant, Makini Howell, is associated with various restaurant services, including cafes, bistros, and mobile food services.

Howell sought registration of the PLUM mark on the Principal Register for vegan packaged prepared foods (International Class 30) and various restaurant services (International Class 43). Jonna Markets opposed the registration, citing its prior use, registration, and ownership of the PLUM MARKET trademark for retail grocery services and coffee shop services.

Likelihood of confusion. The Board, as always, proceeded with its likelihood of confusion analysis based on the factors outlined in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

Similarity of the marks. The Board found that Howell’s PLUM mark and Jonna Markets' PLUM MARKET mark were confusingly similar. The similarity in appearance, sound, and commercial impression heavily favored a finding of likely confusion. The Board emphasized that the first word in a mark often carries more weight as it is the part consumers are more likely to remember. The dominant "PLUM" in both marks created a strong visual and phonetic resemblance, likely to lead consumers to assume a connection between the two brands.

Similarity of goods and services. The goods and services offered by both parties were closely related. Howell's vegan packaged foods and restaurant services were considered similar to Jonna Markets' grocery and delicatessen services. Both parties operate in the food and beverage industry, targeting similar consumer bases. The Board noted that consumers might reasonably expect a company offering grocery services under the PLUM MARKET mark to also provide related food services, such as those offered by Howell under the "PLUM" mark.

Channels of trade. The Board noted that both parties' goods and services would likely travel through the same trade channels. Jonna Markets' retail stores and Howell's restaurants both cater to the general public, increasing the chances that consumers might encounter both marks in similar contexts. The Board highlighted that both grocery stores and restaurants often share similar marketing and distribution channels, including online platforms and physical locations in urban and suburban areas. This overlap in trade channels further supported the potential for consumer confusion.

Conditions of Sale. The TTAB noted that the goods and services offered by both parties are typically purchased with a low degree of care, as they are relatively inexpensive and bought on impulse. This factor increased the likelihood of confusion, as consumers are less likely to scrutinize the differences between the marks. The Board also pointed out that impulse purchases are more susceptible to brand confusion, as consumers make quick decisions without thorough examination.

Strength of opposer’s mark. Jonna Markets' PLUM MARKET mark, being inherently distinctive and having attained incontestable status, was considered strong. Despite Howell’s argument about the widespread use of "PLUM" in various marks, there was insufficient evidence to diminish the strength of Jonna Markets' mark. The Board noted that while there were other registrations with "PLUM," the specific combination of "PLUM MARKET" had built significant brand recognition and goodwill. This commercial strength implied that the mark should be afforded broader protection against similar marks.

Actual confusion. While there was no evidence of actual confusion, the Board noted that the absence of such evidence was not dispositive, especially given the limited geographic overlap between the parties’ operations. According to the Board, the potential for confusion remained significant, given the similarities in the marks and services.

Market interface. The Board also considered a prior settlement agreement between the parties, which allowed Howell to use certain "PLUM" formative marks but did not explicitly permit the standalone use of "PLUM." The Board interpreted this agreement as neutral in determining the likelihood of confusion. The settlement had specific terms that allowed Howell to use variations such as "PLUM BISTRO" and "PLUM CAFE," but it did not address the use of "PLUM" alone.

Extent of potential confusion. Given the relatedness of the goods and services and the strength of the marks, the Board found that the extent of potential confusion was substantial. The likelihood of confusion was not mitigated by geographic separation, as Howell sought a nationwide registration for her mark.

Conclusion. After weighing all the DuPont factors, the TTAB concluded that Howell’s PLUM mark would likely cause confusion with Jonna Markets' PLUM MARKET mark. Consequently, the opposition was sustained, and Howell’s application for the PLUM trademark was refused registration under both International Classes.

The Case is Opposition No. 91249325.

Judge: Heasley, D.

Attorneys: Frank Angileri (Brooks Kushman P.C.) for Jonna Markets, LLC. Keith G. Adams (Murphy, Pearson Bradley & Feeney, P.C.) for Makini Howell.

Companies: Jonna Markets, LLC

Cases: Trademark USPTO