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 Patterson Thuente Pedersen, PA for Trilliant Food and Nutrition, LLC James A. Rauen, Trademark Examining Attorney, Law Office 109, Dan Vavonese, Managing Attorney. Before Kuhlke, Bergsman and Hightower, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Mailed: April 20, 2015 Trilliant Food and Nutrition, LLC ( Applicant ) seeks registration on the Principal Register of the mark RIO GRANDE ROASTERS (in standard characters) for coffee, in International Class Applicant disclaimed the exclusive right to 1 Application Serial No was filed on October 11, 2013, based upon Applicant s claim of first use anywhere and use in commerce since at least as early as July 31, The application was filed by Victor Allen s Coffee, LLC. Victor Allen s Coffee, LLC assigned the mark, application, and goodwill associated with the mark to Trilliant Food and Nutrition, LLC on October 24, The assignment was recorded in the Assignment Recordation Branch of the USPTO on May 14, 2014 at reel 5270, frame 0870.

2 use the word Roasters. The translation statement in the application provides that [t]he English translation of RIO GRANDE in the mark is BIG RIVER. The Trademark Examining Attorney has refused registration of Applicant s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), on the ground that Applicant s mark so resembles the registered mark RIO GRANDE ESPECIAL (typed drawing) for Coffee, in Class 30, as to be likely to cause confusion. 2 Registrant disclaimed the exclusive right to use the word Especial. The translation statement in the registration provides that [t]he English translation of ESPECIAL is special. 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 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 2 Registration No ; renewed. Prior to November 2, 2003, standard character drawings were known as typed drawings. A typed mark is the legal equivalent of a standard character mark. TMEP (i) (January 2015)

3 mandated by 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. ). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity and nature of the goods. The goods are identical. B. The established, likely-to-continue channels of trade, classes of consumers and, degree of purchaser care. Because the goods described in the application and the cited registration are identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Since the goods at issue are coffee, the relevant consumers are ordinary consumers. There is no evidence in the record, nor anything inherent about coffee, that would lead us to find that the ordinary purchasers of coffee exercise a level of care in their purchasing decisions that minimizes finding a likelihood of confusion

4 C. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We now turn 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. Du Pont, 177 USPQ at 567. In a particular case, two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation. Kabushiki Kaisha Hattori Seiko v. Satellite Int l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (citing Krim- Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) ( It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion. )). In comparing the marks, we are mindful that where, as here, the goods are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing- Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). 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 - 4 -

5 such that persons who encounter the marks would be likely to assume a connection between the parties. Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 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. June 5, 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 & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As indicated above, the average customer is an ordinary consumer. Applicant s mark RIO GRANDE ROASTERS is similar in all respects to the mark in the cited registration RIO GRANDE ESPECIAL. The dominant element of both marks is the name Rio Grande because the word Roasters is descriptive, the word Especial is laudatory and both Applicant and Registrant have disclaimed the exclusive right to use those words. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) ( Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion. ) (quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407,

6 USPQ2d 1531, (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often less significant in creating the mark s commercial impression ). Further reinforcing the significance of term Rio Grande as the dominant element of the marks is its location as the first part of the marks. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ( it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered ). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) ( Veuve is the most prominent part of the mark VEUVE CLICQUOT because veuve is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp., 23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice the identical lead word). Finally, Applicant features Rio Grande as the dominant part of its mark as displayed on the label it submitted as its specimen of use shown below: While we have identified Rio Grande as the dominant part of both marks, we are cognizant that the likelihood of confusion analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be - 6 -

7 based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 224 USPQ at 751. On the other hand, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. In any event, the words Roasters and Especial do not serve to distinguish the source of RIO GRANDE ROASTERS from RIO GRANDE ESPECIAL because consumers will perceive RIO GRANDE ROASTERS and RIO GRANDE ESPECIAL be different varieties of the RIO GRANDE line of coffee products. Applicant argues, to the contrary, that the words Roasters and Especial distinguish the marks because the name Rio Grande is a weak term when used in connection with food and food related services (e.g., restaurant and bar services). 3 Applicant submitted numerous third-party registrations consisting of the name Rio Grande. However, none of the third-party registrations are for coffee or coffee related products and, thus, none of the marks in the third-party registrations are as close as the Applicant s mark is to the Registrant s mark. See Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) ( Nor is our conclusion altered by the presence in the record of about 40 third-party registrations which embody the word KEY. The great majority of those registered 3 Applicant s Brief, 7 TTABVUE

8 marks are for goods unrelated to those in issue, and there is no evidence that they are in continued use. We, therefore, can give them but little weight in the circumstances present here. ). Also, third-party registrations alone do not prove that Rio Grande is a weak term. Absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983) ) ( third party registrations in this Office, absent evidence of actual use of the marks subject of the third-party registrations, they are entitled to little weight on the question of likelihood of confusion. ). [I]t would be sheer speculation to draw any inferences about which, if any of the marks subject of the third party [sic] registrations are still in use. Because of this doubt, third party [sic] registration evidence proves nothing about the impact of the third-party marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as to their weakness in distinguishing source. Id. at 286. 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. )

9 In view of the foregoing, we find that the marks are similar in terms of appearance, sound, connotation and commercial impression. D. No reported instances of confusion. In its October 7, 2014 Response to an Office Action, Applicant submitted the declaration of Peter Sawin, Applicant s President-Marketing and Innovation. Mr. Sawin attested to the following facts: 1. RIO GRANDE ROASTERS coffee and RIO GRANDE ESPECIAL coffee have coexisted in the marketplace for nearly 20 years; 2. Mr. Sawin is unaware of any reported instances of confusion; and 3. After speaking with the principals of Registrant, Registrant did not express any concerns about infringement or confusion among consumers resulting from the use of the RIO GRANDE ROASTERS and RIO GRANDE ESPECIAL trademarks. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205 ( uncorroborated statements of no known instances of actual confusion are of little evidentiary value ). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant s corporate president s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). In any event, the record is devoid of probative evidence relating to the extent of use of Applicant s and Registrant s marks and, thus, whether there have been meaningful - 9 -

10 opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. E. Balancing the factors. Because the marks are similar, the goods are identical, and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that Applicant s mark RIO GRANDE ROASTERS for coffee is likely to cause confusion with RIO GRANDE ESPECIAL for coffee. Decision: The refusal to register Applicant s mark RIO GRANDE is affirmed