87 North Enterprises, LLCDownload PDFTrademark Trial and Appeal BoardSep 17, 201987734771 (T.T.A.B. Sep. 17, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: September 17, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re 87 North Enterprises, LLC _____ Serial No. 87734771 _____ Matthew J. Ladenheim of Trego Hines & Ladenheim PLLC for 87 North Enterprises, LLC. Bridget Watson, Trademark Law Clerk, Law Office 128,1 Travis Wheatley, Managing Attorney. _____ Before Taylor, Lykos and Adlin, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: 87 North Enterprises, LLC (“Applicant”) seeks to register on the Principal Register the composite mark displayed below with COFFEE disclaimed, 1 A Trademark Law Clerk is someone hired to eventually be a full Trademark Examining Attorney, but who, as of his or her start date, had not been admitted to a bar. Ex parte prosecution was handled by Mayur Vaghani, Examining Attorney, Law Office 124. Serial No. 87734771 - 2 - for “coffee” in International Class 30 and “restaurant services” International Class 43.2 Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the registered mark CRU KAFE in standard characters for “coffee” in International Class 30,3 that it is likely to cause confusion or mistake or to deceive. The appeal of the final refusal is now briefed.4 For the reasons explained below, we affirm the refusal to register. 2 Application Serial No. 87734771, filed December 26, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The description of the mark is as follows: “The mark consists of the stylized lettering ‘kru’ wherein the ‘u’ contained the graphic representation of a liquid with bubbles, appearing over the stylized wording ‘coffee.’” Color is not claimed as a feature of the mark. 3 Registration No. 4783197, registered July 28, 2015. The mark appears on the drawing page as CRU Kafe but this does not change the nature of the mark from a standard character mark to a special form mark. See In re Calphalon Corp., 122 USPQ2d 1153 n.1 (TTAB 2017) (citing In re Star Belly Stitcher, Inc., 107 USPQ2d 2059 n.1 (TTAB 2013)). Our reference to the mark in all uppercase letters reflects the fact that a term registered as a mark in “standard character” form is not limited to any particular font style, size, or color. 4 Applicant’s submission of materials already of record with its brief was superfluous. Serial No. 87734771 - 3 - I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor for which there is evidence or argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). These factors, and the other relevant du Pont factors, are discussed below. A. The Marks The first du Pont likelihood of confusion factor involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Serial No. 87734771 - 4 - Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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’ 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). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Applicant argues that because the graphic design in its mark, “which creates the illusion of a beverage, is integral to, and forms the dominant feature of the mark.” Brief, p. 6; 4 TTABVUE 7. Applicant asserts that prospective consumers will be naturally drawn to that portion of the mark as opposed to the literal portions, thereby distinguishing the marks. In addition, Applicant contends that the phonetic equivalency of KRU and CRU is an insufficient basis for finding similarity. Serial No. 87734771 - 5 - We acknowledge the visual differences in the marks Applicant relies upon. That being said, we find that the literal portions of Applicant’s and Registrant’s marks, KRU COFFEE and CRU KAFE, are aurally similar. Each mark is comprised of two terms and three syllables; each commences with the distinctive phonetically equivalent terms KRU and CRU; and each ends with the similar sounding terms “coffee” and “kafe.” KAFE could be pronounced as “café.” See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a coined term); see also In re The Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969). Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007). With respect to the design element in Applicant’s mark, we find that the stylized letter “u” resembling a cup of hot coffee is subordinate to the literal terms. It is an often-recited principle that when a mark consists of a literal portion and a design portion, the literal portion is usually more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services; therefore, the literal portion is normally accorded greater weight in determining whether marks are confusingly similar. See, e.g., Viterra, 101 USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). We do not find In re Covalinski, 113 USPQ2d Serial No. 87734771 - 6 - 1166 (TTAB 2014) which presented an exception to this rule, to be particularly relevant here. The involved mark in that case included design features that played a much more prominent role than those of Applicant’s mark: The Board, in finding the design to be the dominant element, provided the following rationale: Here, Applicant’s design mark includes the very large, prominently displayed letters RR. The bodies of the Rs are filled with a checkerboard pattern resembling a racing flag. To each R an elongated horizontal “leg” of gradually increasing thickness is appended, each of which ends in a heart design. Inside the legs appear the rest of the letters (i.e., the letter strings “edneck” and “acegirl”), in a form in which the initial letters of each string are displayed in relatively tiny typeface and subsequent letters are displayed in increasing thickness. Together, these graphic devices serve not only to draw attention to the RR letters apart from the wording, but also make the letters that form the “a-c-e” of the word “RACEGIRL” difficult to notice. Since these goods are clothing, consumers would be likely to encounter the mark in a retail setting on hang tags or neck labels. In that context, the visual impression of the mark is likely to be more important. Id. at 1168. None of these reasons are present in this case. That is to say, the wording KRU COFFEE does not appear in “relatively tiny typeface” in a letter string “difficult to notice.” To the contrary, the font is large, bold, easy-to-read lettering. In fact, the Serial No. 87734771 - 7 - depiction of the letter “u” as a cup of hot coffee merely reinforces the literal elements of the mark. For the foregoing reasons, we find that overall Applicant’s and Registrant’s marks are similar in sound, connotation and commercial impression. This first du Pont factor weighs in favor of finding a likelihood of confusion. B. The Goods Next, we compare the goods and services as they are identified in the involved application and cited registration, the second du Pont factor.5 See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The goods need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements 5 Applicant presented no arguments regarding this du Pont factor in its brief. Serial No. 87734771 - 8 - showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods and the goods listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d at 1817 (finding pepper sauce and agave related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). To state the obvious, Applicant’s goods identified as “coffee” in International Class 30 are identical to the goods in the cited registration. With regard to Applicant’s “restaurant services” International Class 43, the Examining Attorney has submitted substantial evidence demonstrating that it is common for coffee to be sold in restaurants under the same brand name. See excerpts from the Dunkin Donuts, Peets Coffee, Starbucks, Coffee Beanery, and Caribu Coffee websites advertising coffee and restaurant services under the same mark submitted with April 10, 2018 Office action. We are aware that coffee merely being served in a restaurant is not sufficient by itself to show that these goods and services are related, and that “something more” is required. See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Here, however, the evidence shows that third parties have adopted a single mark to identify both coffee and restaurant services. And given the national scope of Serial No. 87734771 - 9 - these franchises, the evidence shows “a substantial overlap” between restaurant services and coffee with respect to source. See Coors, 68 USPQ2d at 1063-64. In view thereof, we find that the International Class 30 goods identified in the application and registration are identical, and that the International Class 43 services are related to Registrant’s goods. As such, this second du Pont factor also favors a finding of likelihood of confusion. C. Channels of Trade We direct our attention now to the established, likely-to-continue channels of trade, the third du Pont factor. As noted above, Applicant’s goods identified as “coffee” in International Class 30 are identical to the goods in the cited registration. As such, because these goods are identical and unrestricted as to trade channels, we must also presume that these particular goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers. See Viterra, 101 USPQ2d at 1908 (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 Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). With regard to Applicant’s “restaurant services” International Class 43, because the identification in the cited registration has no restrictions on channels of trade, we Serial No. 87734771 - 10 - must presume that Registrant’s “coffee” travels in all channels of trade appropriate for such goods, which the record shows includes restaurants. See Viterra, 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005). Accordingly, the third du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels also favors a finding of likelihood of confusion. D. Strength of the Cited Mark We will now consider the number and nature of similar marks in use on similar goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he purpose of [an applicant] introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal Serial No. 87734771 - 11 - citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). “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.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“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.”)). Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6 Serial No. 87734771 - 12 - USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987). Applicant maintains that CRU, or the phonetic equivalents KRU and CREW are “commonly used in the market place” and thus entitled to a narrow scope of protection as applied to coffee. 4 TTABVUE 7. In support thereof, Applicant has made of record the following Principal Register third-party registrations: Registration No. 2265076 for the mark displayed below for “coffee and tea” in International Class 30; Registration No. 3485393 for the mark BREW FOR THE CREW for “coffee” in International Class 30; Registration No. 3739982 for the mark BOO CREW for “candy” in International Class 30; Registration No. 4575659 for the mark CREW CUP COFFEEWORKS for “coffee beans” in International Class 30; Registration No. 4772874 for the mark displayed below Serial No. 87734771 - 13 - for “Hats; T-shirts” in International Class 25; “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges” in International Class 30; and “Electronic cigarettes” in International Class 34; Registration No. 4863195 for the mark ROAD CREW CRUNCH for “Cereal based snack food” in International Class 30; Registration No. 4982163 for the mark displayed below for “drinking glasses” in International Class 21; “Seafood, not live; crabs, not live; fish-based spreads; seaweed salad; tuna salad; seafood salad; crab cakes; fish cakes” in International Class 29; and “pies; tarts; sauces; cocktail sauce” in International Class 30; Registration No. 5128400 for the mark THE COLD BREW CREW for “coffee” in International Class 30; and Serial No. 87734771 - 14 - Registration No. 5334630 for the mark JAVA CREW for “Chocolate food beverages not being dairy-based or vegetable based; Coffee-based beverage containing milk; Coffee beans; Coffee and tea; Chocolate covered roasted coffee beans” in International Class 30. See October 10, 2018 Response to Office Action. Registration Nos. 3739982, 4772874, 4863195, and 4982163 are for goods unrelated to coffee. The remaining five registrations incorporate the word CREW within phrases that engender a different meaning than the cited mark.6 Thus, these registrations are of minimal, if any, probative value because we cannot determine from the face of the registrations whether the term “cru” or the phonetic equivalent thereof is descriptive, generic, or so highly suggestive of “coffee” and therefore weak or deserving of a lesser degree of protection based on the registrations. In addition, the record is devoid of examples of actual use of marks comprised of CRU or the phonetic equivalent thereof (other than “crew,” which has a particular, unrelated meaning) in connection with Registrant’s goods or goods related thereto. Overall the evidence fails to show that “customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted). Indeed, Applicant appears to misunderstand the appropriate level of evidence to support a determination that a 6 For this same reason, Applicant’s argument that the extent of potential confusion due to the existence of these third-party registrations is de minimus fails as well. Serial No. 87734771 - 15 - cited mark is weak. See In re Inn at St. John’s, 126 USPQ2d at 1745-46 (discussing limited probative value of a few third-party registrations in absence of evidence of third-party use). Accordingly, this factor is neutral. II. Conclusion We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto. The similarities of the marks coupled with the identical nature of the goods, related services and overlapping trade channels leads us to the conclusion that prospective consumers are likely to confuse the source of the involved goods. The remaining factors discussed above are neutral, and we treat as neutral any du Pont factors for which there is no evidence of record. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to both classes of goods and services. Copy with citationCopy as parenthetical citation