TTAB - Trademark Trial and Appeal Board - *1 SUPER VALU STORES, INC. v. EXXON CORPORATION, ASSIGNEE OF H & H OIL CO., INC. March, 3, 1989

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





March, 3, 1989

Hearing: November, 10, 1989



 Opposition No. 72,174 to application Serial No. 450,491 filed October 31, 1983.



Dorsey & Whitney for Super Valu Stores, Inc.



Vincent F. Bick, Jr. for Exxon Corporation, assignee of H & H Oil Co., Inc.



Before Rooney, Seeherman and Quinn






Opinion by Rooney






 An application has been filed by Exxon Corporation, assignee of H & H Oil Co., Inc., to register the mark "TIGER MART" (the word, "MART" disclaimed) for retail convenience store services. [FN1]



 Registration has been opposed by Super Valu Stores, Inc. on the ground that applicant's mark as used on the recited services, so resembles the mark "TIGER DISCOUNTER" previously used by opposer for retail food store services, as to be likely to cause confusion, mistake or deception.



 Applicant, in its answer to the notice of opposition, has admitted that its retail convenience store services are substantially identical to opposer's retail food store services and that the services of both applicant and opposer are directed to the same class of customers and are provided through the same channels of trade. Applicant has, however, denied opposer's allegation of likelihood of confusion.



 The record consists of the pleadings; the file of applicant's involved application; opposer's interrogatories Nos. 3 and 15 and applicant's answers thereto, as made of record by opposer's notice of reliance pursuant to Trademark Rule 2.120(j); and testimony depositions with exhibits on behalf of both opposer and applicant. Both parties have filed briefs and reply briefs, [FN2] and were represented at the oral hearing requested by applicant.



 Opposer, Super Value Stores Inc., a wholesale food distributor, acquired the rights to the mark "TIGER DISCOUNTER" upon purchasing the assets of Ryans, Inc., opposer's predecessor-in-interest. Ryans, Inc. evolved from a family food business that commenced operations as early as 1894 and provided food services throughout the western states of Montana and Wyoming. Over the years, Ryans developed into a series of commonly owned and managed companies that provided a variety of wholesale grocery store services and, to a lesser extent, retail grocery store services. Approximately during 1973, Ryans reorganized and its operations, which consisted of eight distribution centers, were consolidated into a single corporation, Ryans Mercantile, Incorporated. Thereafter the name was changed to Ryans, Inc. the assets of which were acquired by opposer, Super Valu Stores, Inc., in 1980. Ryans has, since that time, operated as a division of opposer. Among Ryan's assets, acquired by Super Valu, were the "TIGER DISCOUNTER" program and the "happy tiger" Logo.



 Ryans had been an IGA (Independent Grocers Association) authorized regional wholesaler for the states of Wyoming and Montana since 1959. The purpose of IGA, founded in 1926, is to provide independent retail grocers with certain services, to allow them to compete with the regional grocery store chains. The retail grocers who are members of IGA are franchised and must comply with IGA requirements to maintain a standard of quality throughout the IGA network. Opposer, through Ryans as the regional IGA wholesaler, is in charge of administering these programs.



  *2 The "TIGER DISCOUNTER" program is an advertising and merchandising tool developed by Ryans in 1968. All "TIGER DISCOUNTER" stores are IGA stores serviced by Ryans as IGA's regional wholesaler. IGA provides its retailers with various services, such as, store engineering services and planned merchandising programs for volume and profit. The "TIGER DISCOUNTER" program is such a merchandising program. Under this program, Ryans provides weekly advertising on radio and television, signs, and assistance programs including retail counselors for various departments. Retailers display the official IGA "TIGER DISCOUNTER" logos throughout their stores. The "TIGER DISCOUNTER" program is a price competitive program.



 As opposer's evidence reveals, the mark "TIGER DISCOUNTER" is used in a variety of different ways as an indicator of source of opposer's services. The mark is used on store exteriors, in-store signs, point-of-purchase materials and displays, on billboards, in newspaper ads and inserts, in radio and television spots and on grocery bags. Annual sales by IGA/TIGER DISCOUNTER retailers (opposer's Exhibit 29) range from over $26 million in 1969 to over $274 million in 1986. The total sales of grocery products under the "TIGER DISCOUNTER" program and mark from 1969 through 1986 are nearly $2.25 billion, having shown continual increases each year.



 Applicant, Exxon Corporation, assignee of H & H Oil Co., Inc., is, as applicant alleges and as supported by applicant's testimony, basically a petroleum company. At retail, petroleum products such as gasoline and motor oil are sold at Exxon service stations. Approximately 2,000 of these Exxon service stations have convenience stores attached, connected or otherwise on the premises. These convenience stores sell a limited number of food and grocery items, as well as cigarettes, beer and soda. The exhibits offered in connection with the appearance of such facilities at Exxon stations over the years indicate that they were known by names such as Ritz Food Mart, Dry Creek Grocery, Woody's Country Store and Village Mart and were of various designs. In the 1980s, Exxon initiated a program to have uniformity in station design including any convenience stores on the premises. While the buildings were coordinated in design, the stores apparently continued to have names such as Smith's Grocery, Par-Bill's or Quick Stop.



 The evidence also establishes that applicant, and its predecessors, have used a "tiger design" and the slogan "PUT A TIGER IN YOUR TANK" to promote the sale of its petroleum products since at least 1964. This advertising program was extremely successful. A good part of applicant's testimony is directed to establishing the manner and extent of its use of this "tiger-design" and slogan in connection with its products. The remaining testimony and exhibits concern certain third-party uses sought to be introduced by applicant to support applicant's argument that opposer's mark is weak and entitled to limited protection.



  *3 Applicant has admitted in its answer to the notice of opposition that its retail convenience store services are substantially identical to opposer's retail food store services and that the services of both parties are directed to the same class of customers through the same channels of trade. Applicant also admitted, in its answer to opposer's Interrogatory No. 3, that it had not used the mark "TIGER MART" prior to its stated date of first use, August 30, 1982. Despite these admissions, applicant argued in its brief that the issues of priority and the identity of the involved services are not completely closed issues.



 As to the services, applicant acknowledges that it admitted that the services are "substantially identical" but that it did not admit that they are "totally identical." However, while total identity of goods or services would certainly simplify the determination of likelihood of confusion, there is no requirement that there be total identity in order to find that likelihood to exist. It has long been settled that the goods or services involved need not be identical or even competitive to support a finding of likelihood of confusion. It is enough that they are related in some manner or that the conditions surrounding the marketing of the goods or the offering of the services are such that they would be likely to be encountered by the same persons under circumstances which would give rise, because of the marks used, to the mistaken belief that they originate from or are in some way associated with the same source. See Mobay Chemical Co. v. Standard Oil Co., 163 USPQ 230 (TTAB 1969); In re Precise Imports Corporation, 193 USPQ 794 (TTAB 1976); In re International Telephone & Telegraph Corporation, 197 USPQ 910 (TTAB 1978); Monsanto Company v. Enviro-Chem Corporation, 199 USPQ 590 (TTAB 1978); In re Kangaroo U.S.A., 223 USPQ 1025 (TTAB 1985); and Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 (TTAB 1986). With regard to the foregoing, the difference in size of applicant's and opposer's stores and the fact that applicant's stores have "EXXON" gasoline pumps and signs in front of them, as applicant argues, does not change the fact that the services being performed under the involved marks are "substantially identical." Equally important for our purposes is the fact that a determination of likelihood of confusion must be based on the goods or services as they are identified in the application and/or registrations involved in the proceeding. See Hecon Corporation v. Magnetic Video Corporation, 199 USPQ 502 (TTAB 1978) and Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445 (TTAB 1986). Applicant's identification has no restrictions as to size or location of its food stores.



  *4 As to priority, applicant is seeking to register the word mark "TIGER MART" for retail convenience store services. There is no question that the first use of that mark is August 30, 1982. Applicant unequivocally agreed to that in response to opposer's Interrogatory No. 3.



 Applicant seeks to establish an earlier use by virtue of its use of a "tiger design" and the word "TIGER" in connection with petroleum products. However, there are serious deficiencies in this argument and opposer objected to evidence on this question, an objection which we believe to be well taken.



 One seeking to establish a date of first use prior to that claimed in its application for registration is under a heavy burden, and must present clear and convincing evidence thereof. See Compania Insular Tabacalera, S.A. v. Camacho Cigars, Inc., 167 USPQ 299 (TTAB 1970) and cases cited therein. There is no doubt that the evidence submitted by applicant establishes use of the "tiger design" and slogan since 1964. However, that evidence does not convince us that "TIGER MART" as used on the services identified in the application may be considered a natural extension of that earlier use.



 A user who changes the form of its mark may retain the benefit of its use of the earlier form if the new and the old forms create the same continuing commercial impression. See Ilco Corporation v. Ideal Security Hardware Corporation, 188 USPQ 485 (CCPA 1976). While the marks in this case are composed in significant part of a common term, the test is not whether the marks of the old and the new version are confusingly similar but whether they would be recognized as one and the same mark. Based on the court's decision in the Ilco case, supra, (finding that HOME PROTECTION HARDWARE creates a different commercial impression than does HOME PROTECTION CENTER) we conclude that there is not the necessary identity between applicant's earlier used marks and "TIGER MART". Even if we were to reach a different conclusion on the identify of the marks, the ultimate question would then turn on whether the services on which these marks are used are the same or substantially identical. With regard to that question, there is a clear difference between applicant's gasoline service station services and sales of petroleum products and its retail convenience store services.



 It is our opinion therefore that, even if the earlier use had been properly pleaded, which it has not, there is too great a difference between the uses of a "tiger design" and slogan in connection with petroleum products and applicant's later use of "TIGER MART" for retail convenience store services to allow that use to be used for purposes of "tacking-on."



 Accordingly, we find that opposer's use of "TIGER DISCOUNTER" predates applicant's use of "TIGER MART".



 Turning to the marks, opposer argues that the word "TIGER" is the dominant portion of each of these marks because the words "MART" and "DISCOUNTER" have little, if any, significance for purposes of distinguishing one party's services from another's. Applicant takes issue with that position, arguing that the marks must be considered in their entireties including any disclaimed portions thereof.



  *5 While there is no doubt that marks must, in the final analysis, be considered in their entireties, it is entirely proper to note that one word or feature of a mark may be the dominant or more prominent feature in the mark or may be given greater weight in determining likelihood of confusion. See Giant Foods Inc. v. Nation's Food Service, Inc., 710 F2d 1565, 218 USPQ 390 (Fed.Cir.1983) and In re National Data Corporation, 753 F2d 1056, 224 USPQ 749 (Fed.Cir.1985).



 Comparing these two marks, where the other feature in each is descriptive, it seems clear that the word "TIGER" is the portion to which potential customers will look for source identification. The question that remains is whether the added features, "MART" and "DISCOUNTER" carry enough of an impact to distinguish the two marks when compared in their entireties. It is our opinion that they do not, simply because each imparts information about the services to a viewer and will be so understood.



 It is noted, additionally, that where the goods or services on which the marks are used are as similar as they are in this case, the degree of similarity required of the marks in order to find a likelihood of confusion is less than is required where the goods or services are dissimilar and noncompeting. See Jules Berman & Associates, Inc. v. Consolidated Distilled Products, Inc., 202 USPQ 67 (TTAB 1979).



 Applicant has offered evidence of third-party use to establish that opposer's mark is weak and entitled to a narrow scope of protection. Opposer objected to this evidence in its reply brief, arguing that it should not be considered because applicant refused to furnish any information it might have had on that subject in response to opposer's discovery request therefor. In response, applicant argues that opposer attended the deposition during which this evidence was introduced, did not object to its introduction and cross-examined the witness. Applicant further maintains that opposer was aware of applicant's third-party use defense two years before applicant's brief was filed. In order to resolve this controversy, we must examine the facts behind it.



 Opposer served interrogatories on applicant during the discovery period.  [FN3] Interrogatory 15 asked:

   Is applicant aware of any third-party using the name TIGER in connection with the providing of retail food store services? If the answer is not unqualifiedly in the negative, identify all such third party uses, all examples or documents evidencing such third party usage and all persons having knowledge of such third party usages.



 Applicant responded:

   Exxon claims attorney-client and work product privilege for the information on third party uses of TIGER that its attorneys have gathered in preparation for defending this opposition.



 A supplemental response was filed as follows:

   H & H is unaware of any third party uses of TIGER.

*6 Opposer filed a notice of reliance, during its testimony period, on applicant's answers to Interrogatory No. 3 and the supplemental answer to No. 15, which concerns the knowledge of H & H. [FN4]



 During its testimony period, applicant took the testimony of Mr. Richard Lower regarding fifteen third-party uses. Opposer cross-examined the witness but did not object to the testimony until applicant argued the third-party evidence in its brief. In opposer's reply, it raised an objection to the third-party evidence on the ground that such evidence is not relevant to the issues pleaded in this proceeding and on the further ground that applicant indicated during discovery (in response to Int. 15) that it had no such evidence. [FN5] Citing FRCP 32(d)(3)(a), opposer argued that its objection is timely since objections to relevancy are not waived by failure to raise them at the deposition. [FN6]



 Regardless of applicant's arguments concerning opposer's failure to object to third-party evidence during the deposition, the fact remains that applicant declined to provide opposer with any information which it had concerning third-party uses in response to a legitimate discovery request therefor.



 Applicant's argument that opposer knew of applicant's third-party defense two years before applicant's brief was filed and/or that opposer didn't raise its objection during the deposition introducing that defense doesn't diminish the effect of opposer's refusal to provide discovery. [FN7] That is to say, a party may not refuse to furnish information in response to a discovery request on the ground of "confidentiality", as applicant did here, and then introduce evidence on such matters during its trial period. See Visual Information Institute v. Vicon Industries, 209 USPQ 179 (TTAB 1980) and Weiner King, Inc. v. The Wiener King Corporation, 204 USPQ 820 (CCPA 1980). To permit a party to do so would defeat the purpose of the discovery process.



 This evidence has therefore been excluded. However, even if we were to consider it, we would not find it persuasive of a different result. Five or six of the fifteen examples are for services specifically different from those involved herein, and in several others, the "TIGER" motif has peculiarly local significance, i.e. having reference to the Clemson Tigers or the Detroit Tigers.



 Finally, the arguments that the names Exxon and IGA are used in proximity to the respective marks and that opposer operates only in a limited geographic area, remote from applicant, are not persuasive. Applicant is not seeking to register the mark in conjunction with its house mark. Nor is it seeking a territorially restricted registration. These factors are therefore irrelevant to our decision herein.



 In view of the foregoing, the opposition is sustained and registration to applicant is refused.



L.E. Rooney



E.J. Seeherman



T.J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 450,491 filed October 31, 1983, claiming a date of first use of August 30, 1982.



FN2. The parties have in addition filed responses to each other's reply briefs. Because the circumstances appear to merit it, all briefs and responses have been given consideration by the Board.



FN3. We do not know the dates of service or of response.



FN4. Applicant argued that opposer misled the Board in relying only on the supplemental answer to Interrogatory No. 15. With regard thereto, it was opposer's option to rely on so much of applicant's discovery responses as it thought advisable. The answer submitted clearly stated that it was the knowledge of H & H which was indicated. It was obviously not Exxon's own knowledge to which reference was made. If applicant believed that response to be misleading, it could have availed itself of the provisions of Trademark Rule 2.120(j)(5) and relied on "... any other answers to interrogatories ... which should in fairness be considered so as to make not misleading what was offered by the inquiring party." Applicant chose not to do so. However, inasmuch as the original answer to No. 15 was referred to by both parties in their responsive briefs and since there is no dispute as to what that answer was, we have treated it as being of record.



FN5. In fact, there is a discrepancy regarding the answer to Int. No. 15. In its reply brief, opposer referred to the answer to Int. No. 15 as being an unequivocal "no" when, in fact, that was the answer to Int. No. 3, asking whether applicant's first use was any earlier than its claimed use date. This transposition of answers was brought to opposer's attention by applicant. A few days later opposer filed a supplement to the reply brief correcting the error. Applicant then filed a response to the reply brief arguing, in effect, that opposer's misquotation of the answer was done in bad faith. Opposer countered with a reply to applicant's response.

 Since opposer immediately filed a correction when the discrepancy was called to its attention and inasmuch as both answers, with the questions to which they were directed, had previously been made of record we do not regard opposer's statement as being intentionally misleading.



FN6. At another of applicant's testimony depositions, following several objections by opposer as to relevance, applicant's attorney stated:

   Mr. Fronek, you--I believe you know that the relevancy objections can be raised at any time. If you're trying to disrupt the flow of the questions, you can raise the relevancy objections at the hearing in a brief. You have that right.



FN7. The knowledge that applicant had gathered some third-party information, obliquely referred to in the answer to Int. No. 15, does not satisfy the aims of discovery and cannot be said to have put opposer on notice concerning applicant's third-party evidence. Opposer was effectively precluded from pursuing its own discovery relative to the third-party uses introduced by applicant as well as others of which applicant had information which it chose not to introduce, for whatever reason. (Lower deposition pp. 39 and 40)


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