H.J. Heinz Company sure hopes so. For about five years, it has been waiting for a result in its favor. It is going to have to wait a little longer, and may need more than patience, for that result.
In 2010, Promark Brands, Inc., the owner of several registrations for the mark SMART ONES for use in connection with frozen food meals, popped this case in the oven and opposed registration of the mark SMART BALANCE for use in connection with a variety of frozen food appetizers and entrees on the grounds of likelihood of confusion and dilution. Applicant GFA Brands, Inc. responded, and the parties litigated all the way through an oral hearing, which took place just over a year ago. In March, the Trademark Trial and Appeal Board (the "TTAB") put a fork in the case and declared it done, ruling in favor of Promark/Heinz, finding no likelihood of confusion or dilution. We are reheating the leftovers three months later because last week Heinz filed a complaint for de novo review of the TTAB decision and for declaratory relief in the U.S. District Court for the Western District of Pennsylvania.
Heinz itemized fewer than 57 varieties of grievances at the heart of its complaint, asking the court to find that the TTAB erred by concluding the marks create different commercial impressions; by failing to give proper weight to the strength and fame of the SMART ONES mark (especially by weighing the presence of WEIGHT WATCHERS on packaging too heavily), and by determining that "smart" is weak in the frozen food category.
Some of Heinz's difficulties at the TTAB had to do with the fact that two brands were touching on the plate (so to speak). In the image below, "weight watchers" appears immediately above SMART ONES on the packaging. Since the two marks are consistently closely displayed this way, the TTAB found that every sale and advertising expenditure could just as likely support consumer recognition of "weight watchers" as of SMART ONES.
Many of Heinz's difficulties at the TTAB pertained to survey evidence, and that gives us some more to chew on. Heinz submitted two consumer surveys attempting to support its claim of fame of the SMART ONES mark. Detail about one of the survey's methodologies left it unclear whether respondents indicated recognition of WEIGHT WATCHERS SMART ONES or just SMART ONES. The second survey asked respondents only about WEIGHT WATCHERS SMART ONES. So the TTAB decided neither of those surveys could clearly speak to the strength of SMART ONES alone. Finally, the TTAB disregarded the likelihood of confusion survey because it failed to follow several of these best practices:
Properly define and choose the universe of respondents;
Properly formulate and present the survey questions;
Conduct interviews in a manner to minimize error and bias;
Properly code, collect, and analyze data;
Prepare complete and appropriately detailed reports
Market recognition is grown, not made. It remains to be seen whether Heinz will be able to produce surveys that both follow best practices and support its claims so convincingly that the balance of likelihood of confusion factors tips in its favor (not to mention the dilution claims). But trademark owners can think about at least two lessons while we begin our postprandial activities:
First, beware of associating a mark so closely and consistently with another in the marketplace that the mark does not establish an independent identity. Second, when survey evidence is necessary or desirable in a litigation setting, take care to ensure the survey follows the best practices outlined above so it will be accepted in support of the claims.
So will good things come to Heinz if it waits? Look what happened to youâyou waited all week and got thisâ¦.
 Promark later assigned the SMART ONES mark and related registrations to Heinz, so Heinz was joined as an opposer.