Judith L. Grubner

When I lived in the Chicago suburb of Oak Park, Illinois, if the wind was blowing from the right quarter you could smell the aroma of LEMONHEAD® and RED HOTS® candy from the Ferrara Pan Candy Co. factory in nearby Forest Park. Ferrara Pan, founded in 1908, is also the manufacturer of other well-known candies such as ATOMIC FIREBALL® cinnamon candy, JAW BUSTERS® jawbreakers and BOSTON BAKED BEANS candy coated peanuts. In June 2011, Ferrara Pan added PEANUTHEAD® candy to its line of products and obtained a federal registration for that trademark in September 2011. Ferrara Pan used what it described as a photograph of a BOSTON BAKED BEANS candy package that also bore the PEANUTHEAD mark as its specimen of use to get that registration.

While the PEANUTHEAD application was still pending in the U.S. Patent and Trademark Office, Ferrara Pan filed a notice of opposition in the Trademark Trial and Appeal Board against an application to register NUTHEADS, owned by Nut Heads Chocolate Factory, Inc., of Perham, Minnesota. After the PEANUTHEAD mark registered, Ferrara Pan also filed a notice of opposition against Nut Heads’ application to register NUTHEADS CHOCOLATE FACTORY. In those opposition proceedings, Ferrara Pan made statements that Nut Heads’ use and/or registration of the NUTHEADS and NUTHEADS CHOCOLATE FACTORY marks are likely to cause confusion because of their resemblance to the PEANUTHEAD mark and other Ferrara Pan marks that contain “HEAD.” Ferrara Pan also responded to a written question in the NUT HEADS opposition that “use and/or registration of NUTHEADS for the goods identified in [the NUTHEADS application] is a violation of [Ferrara Pan’s] trademark rights.”

Those statements, which are commonly made in opposition proceedings, have come back to bite Ferrara Pan. In a Complaint filed in U.S. District Court in Minnesota on February 10, 2012, Nut Heads and its parent company KLN Enterprises, Inc. have asked the judge to declare that the NUTHEADS and NUTHEADS CHOCOLATE FACTORY marks do not infringe Ferrara’s Pan’s PEANUTHEAD or other marks, to allow them to continue selling their products using those marks, to bar Ferrara Pan from suing them for trademark infringement, and to order the TTAB to dismiss the pending oppositions. Nut Heads states in the Complaint that it is currently selling chocolate covered licorice, pretzels, potato chips, and caramel-corn, glazed nut-clusters and holiday gift tins in connection with its marks.

Nut Heads contends that Ferrara Pan “has not offered [KLN and Nut Heads] evidence showing that [Ferrara Pan] has in fact used the mark PEANUTHEAD as of June 1, 2011.” In support, it points to the absence of any PEANUTHEAD products on Ferrara Pan’s web site as of December 12, 2011. However, Nut Heads does not go so far as to claim that Ferrara Pan obtained its PEANUTHEAD registration fraudulently or that the PEANUTHEAD mark and registration are invalid because the mark was not actually in use in U.S. commerce on June 1, 2011, as Ferrara Pan represented to the USPTO. Nor did Nut Heads include any allegations of fraud or invalidity in its answer to Ferrara Pan’s opposition to the NUTHEADS application.