In re Trilliant Food and Nutrition, LLC

Transcription

1 This Opinion is Not a Precedent of the TTAB UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board In re Trilliant Food and Nutrition, LLC Serial No Kyle T. Peterson of Peterson Thuente Pedersen, PA, for Trilliant Food and Nutrition, LLC. W. Wendy Jun, Trademark Examining Attorney, Law Office 103, Michael Hamilton, Managing Attorney. Before Bergsman, Wellington and Wolfson, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Mailed: March 7, 2016 Trilliant Food and Nutrition, LLC ( Applicant ) seeks registration on the Principal Register of the mark LA TAZZA (in standard characters) for plastic cartridges containing coffee and cappuccino for use in single-serve brewing machines, in International Class During the prosecution of the application, Applicant included 1 Application Serial No was filed on February 27, 2015, based upon Applicant s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. 1051(b).

2 the following translation statement: The English translation of LA TAZZA in the mark is the cup. 2 The Trademark Examining Attorney has refused registration of Applicant s mark under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that Applicant s mark so resembles the mark TAZZA (standard characters) for coffee, ground coffee, roasted coffee, coffee beans, instant coffee, in Class 30, as to be likely to cause confusion. 3 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 2 The word Tazza is the Italian word for cup. About.com website attached to the June 5, 2015 Office Action. The word La is the feminine definite article. Collins English- Italian Dictionary (collinsdictionary.com). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). The term Definite Article is defined as the article the used to show the following noun refers to one or more specific persons or things. Merriam-Webster online dictionary (merriam-webster.com). 3 Registration No , registered on June 23, 2008; Sections 8 and 15 affidavits accepted and acknowledged. The registration includes the following translation statement: The foreign wording in the mark translates into English as cup

3 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ( The fundamental inquiry mandated by 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. ). A. The similarity or dissimilarity of the marks and the number and nature of similar marks in use on similar goods. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In comparing the marks, we are mindful that [t]he 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. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver - 3 -

4 & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the goods at issue are single service coffee cartridges or pods and coffee in general, the average customer is an ordinary consumer. Applicant s mark is LA TAZZA and the registered mark is TAZZA. However, [t]he [Italian] article La, which means The, cannot be said to have any distinguishing effect. In re Central Soya Co., Inc., 220 USPQ 914, 916 (TTAB 1984) (POSADA is substantially identical in sound, appearance and commercial impression to LA POSADA). 4 The Italian term La, like its English equivalent, is not a term that is significant in distinguishing one mark from another in the likelihood of confusion analysis. The definite article THE likewise adds little distinguishing matter because the definite article most generally serves as a means to refer to a particular business entity or activity or division thereof, and it would be a natural tendency of customers in referring to opposer s services under the mark in question to utilize the article THE in front of U-BANK in view of their uncertain memory or recollection of the many marks that they encounter in their everyday excursion into the marketplace. United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 236 (TTAB 1977). Accord In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE are virtually identical because [t]he addition 4 Ultimately, the Board in that case determined that there was no likelihood of confusion because, under Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982), to establish likelihood of confusion between food products and restaurant services a party must show something more than that similar even identical marks are used

5 of the word The at the beginning of the registered mark does not have any trademark significance. ); In re Narwood Productions, Inc., 223 USPQ 1034, 1034 (TTAB 1984) ( The fact that the presentation in the mark of the cited registration is as a single word [MUSICMAKERS] rather than two words [MUSIC MAKERS] is obviously insignificant in determining the likelihood of confusion. So also is the fact that appellant s mark, as it is sought to be registered, includes the definite article the ); Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269, (TTAB 1980) ( Since the psychological and marketing impact of petitioner s mark in its earlier version clearly was derived from the word IMAGE, the omission of the word THE (the definite article serving merely to emphasize IMAGE ) from the later version did not interrupt the continuity of use ). Applicant argues that the Trademark Examining Attorney improperly applied the doctrine of foreign equivalents. 5 However, the Trademark Examining Attorney did not rest her analysis on the English translation of the word Tazza and she did not reference, let alone attempt to apply, the doctrine of foreign equivalents in analyzing the similarity or dissimilarity of the marks; nor do we. Applicant also argues that Registrant s mark is a weak mark that is only entitled to a narrow scope of protection or exclusivity of use. 6 Applicant referenced TTABVUE TTABVUE

6 registered marks incorporating the word Tazza or Taza for coffee. The registered marks are listed below: 7 Mark Reg. No. Translation TAZZA ITALIA Italian cup TAZZA MIA My cup TAZZA RICA Rich cup DEL CAFICULATOR A SU TAZA Our coffee grower to your cup CAFE TAZA DE ORO Coffee gold cup CAFÉ VENEZUELA DEL CAFICULATOR A SU TAZA VIVACE ESSPRESSO UNA BELLA TAZZA DI CAFFE The translation of café is coffee and DEL CAFICULATOR A SU TAZA is translated as Our coffee grower to your cup Vivace is the Italian word for lively and una bella tazza di caffe is an Italian phrase meaning a beautiful cup of coffee. JAVATAZA COFFEE No translation SABOR DE CASA EN CASA TAZA Taste of home in every cup BELLATAZZA Beautiful cup 7 We do not give any consideration to the application Serial No for the mark TAZZA PRONTO because pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992); Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 594 (TTAB 1980)

7 In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) ( A mark s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning). ); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, (TTAB 2011) (same); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition 11:83 (4th ed. 2016) ( The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another's use. ). Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at In other words, it is similar to acquired distinctiveness. The third-party registrations submitted by Applicant are not probative of market strength because the third-party registrations are not evidence that those marks have been used at all, let alone used so extensively that consumers have become sufficiently conditioned by their usage that they can distinguish between such marks on the bases of minute differences. The probative value of third-party trademarks - 7 -

8 depends entirely upon their usage. 8 E.g., Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) ( The significance of third-party trademarks depends wholly upon their usage. Defendant introduced no evidence that these trademarks were actually used by third parties, that they were well promoted or that they were recognized by consumers. ). As the Court of Customs and Patent Appeals, the predecessor to our primary reviewing court, pointed out in Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (C.C.P.A. 1967), the existence of these registrations is not evidence of what happens in the market place or that customers are familiar with their use. Where, as here, the record includes no evidence about the extent of [third-party] uses [t]he probative value of this evidence is thus minimal. See also Olde Tyme Foods Inc. v. Roundy s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) ( As to strength of a mark, however, registration evidence may not be given any weight. ). However, third-party registrations have evidentiary value to show the sense in which a mark is used in ordinary parlance. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak. [McCarthy on Trademarks and Unfair Competition 11:90 (4 th ed. 2015)]; see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 [189 USPQ 693] (CCPA 1976) (even if there is no evidence of actual use of third-party 8 The du Pont factor is the number and nature of similar marks in use on similar goods; not the number of third-party registrations

9 registrations, such registrations may be given some weight to show the meaning of a mark in the same way that dictionaries are used ). Id. In this regard, the evidence suggests that the word Tazza may have been adopted and registered for coffee because the word Tazza may be suggestive of an Italian style cup of coffee. In general, where a party has an inherently weak mark, competitors may come closer to the mark than would be the case with a strong mark without violating the party s rights. In this case, however, where the addition of the indefinite article La in Applicant s mark has no trademark significance, there is nothing that distinguishes Applicant s mark from the registered mark no matter its degree of strength along the spectrum of marks. Appellee, as did the board, emphasizes the view that KING S is weak and entitled to limited protection. The description of marks as weak or strong, and references to the breadth of protection to be given a mark, have served as a convenient type of shorthand in the literature of opinions concerned with likelihood of confusion. We employed such language in King-Kup Candies, Inc. v. King Candy Co., 48 CCPA 948, 288 F.2d 944, 129 USPQ 272 (1961), when we described KING'S as being almost as weak a mark as can be found. Such expressions, however, should not obfuscate the basic issue. Confusion is confusion. The likelihood thereof is to be avoided, as much between weak marks as between strong marks, or as between a weak and a strong mark. Similarly, the statute, by providing remedies to trademark owners, enables those owners to protect their marks. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)

10 In view of the above, we find that Applicant s mark LA TAZZA and Registrant s mark TAZZA are substantially similar, when considered in their entireties, in sound, appearance, and connotation. The marks further convey essentially the same commercial impression when applied to the goods: that is, an ethnic-sounding term suggesting an imported Italian coffee. B. The similarity or dissimilarity and nature of the goods. Applicant is seeking to register its mark for plastic cartridges containing coffee and cappuccino for use in single-serve brewing machines and the description of goods in the registered mark is for coffee, ground coffee, roasted coffee, coffee beans, instant coffee. While both marks are for coffee, Applicant argues that the goods are quite distinct because Applicant s products are for single serve coffee cups while Registrant s goods require pot brewing by industrial coffee machines or commercial coffee makers. 9 The problem with Applicant s argument is that because there are no restrictions or limitations in Registrant s description of goods, Registrant s coffee products may be used in or sold through single serve coffee cartridges. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) ( There is no specific limitation and nothing in the inherent nature of Squirtco s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration ). Therefore, we must presume that Registrant s coffee could include all types of coffee regardless of the manner in which the coffee is sold or distributed. 9 7 TTABVUE

11 In any event, the Trademark Examining Attorney has submitted evidence showing that the same entities sell single serve coffee cartridges or pods and coffee, ground coffee, roasted coffee, and coffee beans. In her July 9, 2015 Office Action, the Trademark Examining Attorney submitted evidence from the following websites: 1. The Starbucks Store website (starbucks.com) advertises the sale of Starbucks Veranda Blend Brewed Coffee Verismo single cup cartridges as well as Starbucks whole bean coffee and roast ground coffee; 2. The Gevalia website (Gevalia.com) advertises the sale of Gevalia ground, whole bean, roasted ground coffees as well as Gevalia single serving coffee cartridges; 3. The Amazon Prime website (amazon.com) advertises the sale of Caribou single serve coffee cartridges and the Target website (target.com) advertises the sale of Caribou roast ground and whole bean coffees, as well as Caribou single serve coffee cartridges; and 4. The Coffee For Less website (coffeeforless.com) advertises the sale of Folgers single serve coffee cartridges and the Folgers website (folgerscoffee.com) advertise the sale of Folgers roasted ground coffee as well as Folgers single serve coffee cartridges. The following brands appear on the WalMart website (Walmart.com): 1. Maxwell House ground coffee and Master Blend Light Roast Coffee single serve cartridges; TTABVUE 7, 9, 10, 11 and

12 2. Starbucks ground coffee and Starbucks Verismo Espresso Roast Coffee cartridges; 11 and 3. Chock Full O Nuts ground coffee and Chock Full O Nuts Soho Morning Coffee single service cartridges. 12 In view of the foregoing, we find that the goods are related. C. Established, likely-to-continue channels of trade. The above-noted third-party websites show that single service coffee cartridges and coffee, ground coffee, roasted coffee, and coffee beans are sold through coffee company websites (Starbucks, Folgers, and Gevalia), online coffee retailers (Coffee For Less), and mass market retailers (Target, Walmart, Amazon). Accordingly, single service coffee cartridges and coffee, ground coffee, roasted coffee, and coffee beans move through some of the same channels of trade. D. Balancing the factors. Because the marks are similar, the goods are related, and the goods move through some of the same channels of trade, we find that Applicant s mark LA TAZZA for plastic cartridges containing coffee and cappuccino for use in single-serve brewing machines is likely to cause confusion with the registered mark TAZZA for coffee, ground coffee, roasted coffee, coffee beans, instant coffee. Decision: The refusal to register Applicant s mark LA TAZZA is affirmed TTABVUE 6, 8, 11, 12, 13 and TTABVUE 6, 7, 8, and