Panera Trademark Proceeding Dismissed
It’s Getting Hot In the Kitchen; Panera Trademark Proceeding Dismissed
The Trademark Trial and Appeal Board recently dismissed an opposition proceeding brought by Pumpernickel Associates, LLC, owner of the “Panera” and “Panera Bread” trademarks for restaurant services (“Pumpernickel”). The complaint, filed against Ningbo Panera Lighting Co., Ltd. (“Ningbo”), opposed registration of the mark “Paneralux” for use in connection with a wide variety of goods, including “computer programs, recorded for use in database management, use in electronic storage of data,” “integrated circuit cards used for smart cards,” “Downloadable mobile phone application software for use in database management, use in electronic storage of data,” and “remote control apparatus, namely, remote control transmitter for radio-controlled devices” in International Class 9 and “cooking apparatus and installations, namely, cooking ranges; kettles, electric; freezers; refrigerators” and “extractor hoods for kitchens” in Class 11. Pumpernickel maintained that the “Paneralux” mark should not register on the basis of (1) likelihood of trademark dilution; (2) likelihood of confusion; and (3) false connection under Section 2 of the Lanham Act. In a detailed 83-page opinion, the TTAB dismissed the Panera trademark proceeding, determining Pumpernickel failed to establish each of its three claims.
Evidentiary Objection
As an initial matter, Ningbo asserted that Pumpernickel’s notice of reliance failed to comply with the requisite description for any of the proffered evidence because it identified that each piece of evidence was offered broadly “in support of Opposer’s claims for likelihood of confusion, dilution by blurring, and false suggestion of a connection,” rather than specifically identifying the specific elements of each category that the evidence was intended to support or refute and, as a result, the Board should refuse to consider the proffered evidence. Given Ningbo waited at least 45 days to raise the objection, the TTAB agreed with Pumpernickel that the objection was untimely and, therefore, waived.
Likelihood of Dilution
To prove a claim of trademark dilution, an Opposer must show:
(1) it owns a famous mark that is distinctive (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark; (3) Applicant’s use of its mark began after Opposer’s mark became famous; and (4) Applicant’s use of its mark is likely to cause dilution by blurring or tarnishment. Advance Mag. Publishers, Inc. v. Fashion Elecs., Inc., Opp. No. 91247034, 2023 WL 4261426, at *17 (TTAB 2023).
Indeed, the “threshold question in a federal dilution claim is whether the mark at issue—here, the “Panera” mark—is “famous.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012). A trademark is famous if it “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” 15 U.S.C. § 1125 (c)(2)(A)). The burden of proving fame, which falls to an Opposer, has long been a heavy and difficult burden to bear because “an opposer must show that, when the general public encounters the mark in almost any context, it associates the term, at least initially, with the mark’s owner,” TiVo Brands LLC v. Tivoli, LLC, Opp. No. 91221632, 2018 WL 6921323, at *7 (TTAB 2018) (internal citations omitted), and that the mark has “become a household term with which almost everyone is familiar.” Id. at *12.
Thus, the TTAB considered:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark;
(iii) The extent of actual recognition of the mark; and
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 15 U.S.C. § 1125(c)(2)(A)).
Pumpernickel claimed that its “Panera” mark became famous before the Ningbo first used the mark in commerce in 2019. In support, it offered evidence of various awards, media coverage, number of visitors to its website and mobile application, and a consumer survey in which 91.3% of consumers reported recognition of the “Panera” mark and brand.
TTAB disagreed. First, the Board noted that much of the evidence offered related to sales revenues and advertising and marketing expenditures after 2019, including Pumpernickel’s reported following social media, celebrity partnerships, advertising and marketing expenditures, awards, and its consumer survey. Likewise, the Board found there was no evidence of the extent, frequency, exposure, and geographical reach of Pumpernickel’s advertising of the “Panera” brand in 2018 and Pumpernickel failed to identify which print and electronic media in which it advertised before 2019. And while Pumpernickel’s Senior Vice President, Controller, and Chief Accounting Officer Mike Wooldridge testified to sales revenue of more than $360 Million that rose to more than $2 Billion by 2013, the Board concluded Mr. Wooldridge failed to explain how he derived those numbers and the basis for his familiarity with them. And while it acknowledged that Pumpernickel’s 22 years in business and its sales revenues as of 2019 were impressive standing alone, they compared unfavorably to Pumpernickel’s competitors like McDonald’s (60 years by 2014) and Starbucks (35 years by 2004). Indeed, in 2004, Pumpernickel’s sales revenues from the “Panera” brand were a mere 12% of Starbucks’ sales revenues for the same year. On this basis, the Board concluded that Pumpernickel “failed to show that by 2019 the ‘Panera’ mark had become a household term with which almost everyone was familiar” or that it had “earned entry into the select class of marks—those with such powerful consumer association that even non-competing uses can impinge on their value…” and that Pumpernickel had failed to present a case of likelihood of dilution.
Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). To win on this claim, Pumpernickel needed to demonstrate, “by a preponderance of the evidence that it has either a registration of or priority in its [PANERA] mark, and that Applicant’s use of its mark is likely to cause confusion, mistake, or deception regarding the source of the [goods] identified in its Application[s].” Priority was not in dispute in this case, leaving only the question of likelihood of confusion.
The likelihood of confusion analysis comes down to the probative facts in the record that are relevant to the likelihood of confusion factors set forth in E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). And while varying weights may be assigned to the separate DuPont factors, two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. Here, while Pumpernickel focused on the alleged fame of its mark and the claimed similarities between the marks and the goods and services, Ningbo maintained there were “other substantially important factors, including but not limited to the length of concurrent use and lack of actual confusion.”
Strength of the “Panera” Mark
Starting first with the strength of the “Panera” mark, the Board analyzed whether the “Panera” mark is conceptually strong (meaning they are inherently distinctive) and commercially strong (meaning a “significant portion of the relevant consuming public recognizes the mark as a source indicator”). Importantly, the Board noted that dilution “fame,” which is an either/or proposition, is not the same as likelihood of confusion fame, which ranges from very strong to very weak. The Board also commented on the fact that for purposes of the likelihood of confusion analysis, a mark can be commercially strong for some goods and services but not others. Here, the Board concluded that the “Panera” mark is both conceptually and commercially strong in terms of restaurant services. However, based on a lack of evidence, it determined the mark is only conceptually strong as to the other goods and services such as merchandise, bakery-café services, websites, loyalty and gift cards, drinkware, dinnerware, and kitchen accessories.
Similarity of the Marks
Under this DuPont factor, the Board must consider marks in their entireties as to appearance, sound, connotation and commercial impression. Similarity in any one of these elements may be sufficient to find the marks confusingly similar. As noted by the Board here, “the proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Pumpernickel maintained that the “Panera” and “Paneralux” marks are sufficiently similar because the dominant portion of each mark—Panera—is the same and the addition of “lux” to Ningbo’s mark is not sufficient to distinguish the marks. Ningbo, on the other hand, argued that “lux” is not descriptive and the marks have different connotations as the “Panera” mark refers to breads (or “pan”) and the “Paneralux” mark is based on Ningbo’s identification of the origins of ‘pan’ and ‘era’ and ‘lux’ as referring to high quality goods that last a long time.” The Board held, without much discussion, that the marks are, indeed, sufficiently similar.
Similarity of Goods and Services and Channels of Trade
The second and third DuPont factors respectively consider “‘[t]he similarity or dissimilarity and nature of the goods and services as described in an application or registration,” and the similarity or dissimilarity of established and likely-to-continue trade channels. Importantly, goods or services need not be identical or even competitive to find a likelihood of confusion but need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. As noted by the Board, “[e]vidence of relatedness may include news articles or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; or copies of prior use-based registrations of the same mark for both applicant’s goods and the goods listed in the cited registration.” The applications and registrations, themselves, may also provide evidence relevant to this factor.
While Ningbo’s “Paneralux” applications included a wide variety of goods, Pumpernickel’s objection focused on “computer programs, recorded for use in database management, use in electronic storage of data,” “integrated circuit cards used for smart cards,” “Downloadable mobile phone application software for use in database management, use in electronic storage of data,” and “remote control apparatus, namely, remote control transmitter for radio-controlled devices” in International Class 9 and “cooking apparatus and installations, namely, cooking ranges; kettles, electric; freezers; refrigerators” and “extractor hoods for kitchens” in Class 11, claiming such goods were either identical, adjacent, or closely related to the “Panera” goods and services. Specifically, Pumpernickel claimed that many of these goods and services are listed in its own pleaded registrations and are or have been available through its website and Panera Shop.
Beginning with the “Panera” restaurant services, the Board concluded that while “it is self-evident that restaurants use ‘cooking apparatus and installations, namely, cooking ranges; freezers; refrigerators’ and ‘extractor hoods for kitchens’ in the course of providing restaurant and catering services,” that does not mean the goods and services are related. Agreeing with Ningbo that there was no evidence Pumpernickel sold any actual kitchen appliances or that Pumpernickel or other restaurants sell (or even use) the Class 9 goods (i.e., computer programs, database management, integrated circuit cards used for smart cards or mobile phone applications for use in managing and storing data). On this basis, the Board found that the “Panera” restaurant services, catering services, and bakery-café services are unrelated to any of the goods listed in Ningbo’s applications.
Having found the respective goods and services unrelated, the Board was unwilling to presume similar channels of trade and held that Pumpernickel failed to show that the channels are at all related.
Other DuPont Factors
In addressing the sophistication of consumers, the Board held that Pumpernickel has “not shown that any of the goods identified in the two applications are likely to be purchased on impulse,” while Ningbo failed to show that the identified goods were sold only to sophisticated purchasers or were purchased with a high degree of care, resulting in a neutral finding on that factor. Similarly, having found the goods and services unrelated and with a neutral finding on channels of trade, TTAB held there was no “opportunity for actual confusion to have occurred.” Also due to the unrelatedness of the goods and services, the Board determined the ninth DuPont factor (variety of goods on which a mark is used) and the eleventh factor (consumer recognition and the extent to which an applicant has a right to exclude others from the use of its mark on its goods) were neutral.
Balancing each of the DuPont factors, as it must, the Board first noted that “any of the DuPont factors may play a dominant role,” and “even a single factor may be dispositive.” Based on the evidence here, the Board concluded that the second and third Dupont factors outweigh the first and fifth factors:
It is unlikely that consumers of the various Class 9 and Class 11 PANERALUX goods identified in the two applications will believe that those goods originate with, or are sponsored or authorized by, the owner of the PANERA mark for restaurant services and various collateral goods and services, because Applicant’s goods and channels of trade are simply too far afield from Opposer’s restaurant services and collateral goods and their channels of trade for confusion to be anything more than “a mere theoretical possibilit[y].”
Thus, there could be no likelihood of confusion and Pumpernickel’s Section 2(d) claim must fail.
False Suggestion of a Connection
Section 2(a) of the Trademark Act, “prohibits registration on either the Principal or Supplemental Register of ‘matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” This type of 2(a) claim has four essential elements: (1) Applicant’s mark is the same or a close approximation of Opposer’s name or identity; (2) The mark would be recognized as such, in that it points uniquely and unmistakably to Opposer; (3) Opposer is not connected with the goods sold by Applicant; and (4) Opposer is of sufficient fame or reputation that, when Applicant’s mark is used in connection with its goods, a connection with Opposer would be presumed. The Board concluded it was not necessary to discuss the first three elements because in failing to prove the “Panera” mark is of sufficient fame that when Ningbo’s “Paneralux” mark is used in connection with its Class 9 and 11 goods, a connection to Pumpernickel would be assumed. In so concluding, the Board noted that while proof that the goods and services are “closely related” is not required, such evidence remains highly relevant to a false association claim. Because it found the involved goods were dissimilar and the “Panera” mark is not famous apart from “restaurant services,” the Board held that Pumpernickel could not prevail on its false suggestion of connection claim.
For all of these reasons, the Board dismissed the opposition with respect to all of Pumpernickel’s claims against the opposed Ningbo applications.
Conclusion
The “Panera” decision is not only thorough in its discussion of likelihood of dilution, likelihood of confusion, and false suggestion of a connection claims and, therefore, instructive in pleading such claims, but provides detailed analysis of the evidence needed to support and prevail on each such claim—particularly on the elements of fame (for both dilution and likelihood of confusion purposes) and similarity/dissimilarity of goods—and is instructive to practitioners and consumers in both prosecuting and defending such claims.
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