Bell Tea & Coffee Company Limited

Trademark Trial and Appeal Board

Jun 14, 2017

No. 79148196 (T.T.A.B. Jun. 14, 2017)

Mailed: June 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Bell Tea & Coffee Company Limited
_____

Serial No. 79148196
_____

Patchen M. Haggerty of Perkins Coie LLP
for Bell Tea & Coffee Company Limited
Roselle M. Herrera, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Cataldo, Wolfson and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Bell Tea & Coffee Company Limited (“Applicant”) seeks registration on the
Principal Register of the mark BEAN BAGS (in standard characters) for “Coffee; tea;
mixes in the nature of concentrates, syrups or powders used in the preparation of tea
based beverages; mixes in the nature of concentrates, syrups or powders used in the
preparation of coffee based beverages; artificial tea or coffee; chicory based coffee
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
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substitutes; tea or coffee substitutes; cocoa, tea or coffee based beverages; flavourings,
other than essential oils, for beverages” in International Class 30.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d); 15 U.S.C. § 1052(d), based on Reg. No. 4567656
for the design mark depicted below:

The mark is registered for “restaurant services; coffee shops; cafe and restaurant
services” in International Class 43; “coffee, namely, ground coffee and whole bean
coffee; tea, namely, leaf tea; cookies, namely, packaged cookies” in International Class
30; and “travel mugs; drinking glasses, namely, tumblers” in International Class 21.2

1 The subject application is a request for extension of protection of International Reg. No.
1206357, pursuant to the Madrid Protocol, Trademark Act § 60, et. seq., 15 U.S.C. § 1141,
et. seq. The International Registration date is April 10, 2014, and the USPTO was notified of
the request for extension on June 19, 2014. Pursuant to Trademark Act § 67, 15 U.S.C. §
1141g, Applicant claims a priority date of October 30, 2013.
2 Registered on the Principal Register on July 15, 2014. The description of the mark reads:
“The mark consists of a very tired scruffy looking guy with stubble in the face, in a bathrobe
and slippers. Pouring a hot cup of coffee into his mouth with big round eyes, half open. Hot
smoking coffee is falling through the air into his big open mouth. The words "The Bean Bag"
are arched above the man pouring the coffee, the word "Café" is straight under the man
pouring the coffee.” The term “CAFÉ” is disclaimed.
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After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
Turning first to a comparison of the goods and services, it is well-established that
in making our determination under the second du Pont factor, we look to the goods
and/or services as identified in the involved application and cited registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
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trade or the class of purchasers to which sales of the goods are directed.”) See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002).
Under this du Pont factor, the Trademark Examining Attorney need not prove,
and we need not find, similarity as to each and every item listed in Applicant’s
description of goods. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods in
a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116
USPQ2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1745 (TTAB 2014). Applicant’s goods are classified in a single class
(International Class 30) and include “coffee” and “tea.” Registrant’s registration
includes “ground coffee and whole bean coffee” and “leaf tea.” These goods are legally
identical to Applicant’s goods because they are specific types of coffee and tea.
Accordingly, because the goods are in-part legally identical, the second du Pont
factor strongly favors a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
There are no limitations as to the channels of trade or classes of purchasers for
Registrant’s “ground coffee and whole bean coffee” or “leaf tea,” or for Applicant’s
“coffee” or “tea.” Accordingly, we must presume that these legally identical goods will
travel through the same channels of trade and be offered to the same classes of
purchasers, namely ordinary consumers who drink coffee and tea. See Stone Lion
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Capital Partners, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968); American Lebanese Syrian Associated Charities
Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See
also 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).
As such, the third du Pont factor – the similarity or dissimilarity of established,
likely to continue trade channels – also favors a finding of likelihood of confusion.
The Marks
We next 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. See Stone Lion Capital Partners, 110
USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1586 (TTAB 2007)). That Applicant’s “coffee” and “tea” are essentially
identical to Registrant’s “ground coffee, whole bean coffee, and leaf tea,” lessens the
degree of similarity between the marks that is required to support a finding of
likelihood of confusion. In re Viterra Inc., 101 USPQ2d at 1908 (citing Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
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(Fed. Cir. 1992) (where the goods at issue are legally identical, “the degree of
similarity necessary to support a conclusion of likely confusion declines.”).
In comparing the marks, the test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression so that confusion
as to the source of the goods or services offered under the respective marks is likely
to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012); see also San Fernando Elec. Mfg. Co. v. JFD Elec's.
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rest’s. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpub., No. 92-1086 (Fed.
Cir. June 5, 1992). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, the
average purchaser is an ordinary consumer who drinks tea or coffee.
Applicant’s mark and Registrant’s mark are similar in pronunciation and
connotation to the extent that both include the phrase BEAN BAG(S). There is no
discernible difference between the singular “bean bag” and the plural “bean bags” in
the context of the involved goods and services.3 Indeed, Registrant’s mark

3 See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material
difference between the singular and plural forms of ZOMBIE such that the marks were
considered the same mark); Weidner Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d
1347, 1355 (TTAB 2014) (SHAPES is similar to SHAPE); In re Pix of Am., Inc., 225 USPQ
691, 692 (TTAB 1985) (the pluralization of NEWPORT is “almost totally insignificant” in
terms of likelihood of confusion among purchasers).

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incorporates Applicant’s mark in its entirety (plural notwithstanding), making it part
of a phrase, THE BEAN BAG CAFÉ, that designates a café, or coffee shop, from which
prospective purchasers can expect to purchase coffee, tea, and beverages made from
coffee.
Applicant argues that the connotations of the marks differ, in that Registrant’s
mark “gives the commercial impression of a comfortable café or coffee shop to start
one’s day” while Applicant’s mark “is suggestive of bags of coffee beans.”4 In either
form, singular or plural, the term “bean bag” suggests a flavor bag, or pouch, in which
coffee or tea is contained, enabling it to be infused in water. And Applicant’s mark
just as readily brings to mind a bean bag chair, suggesting comfort, as Registrant’s
mark brings to mind a bag of coffee beans.5 The double entendre is evident in each
mark. Further, coffee may be sold separately in bags at coffee shops. Consumers who
frequent the THE BEAN BAG CAFÉ are likely to perceive that BEAN BAGS coffee
is associated with, or manufactured or sponsored by, the coffee shop.
Applicant further argues that Registrant’s mark is dominated by the design of
the “very tired scruffy looking guy” “pouring a hot cup of coffee into his mouth,”6 and
that “[g]iven the size of the image . . . in proportion to the small lettering of the
wording ‘The Bean Bag’ above, the prominent design feature is the dominant portion

4 9 TTABVUE 16.
5 We take judicial notice of the definition of “beanbag” in Webster’s dictionary: 1. A cloth bag
partially filled typically with dried beans and used as a toy; 2. any of various pellet-filled bags
used as furniture (such as a chair) or household articles (such as an ashtray base).” At
https://www.merriam-webster.com/dictionary/beanbag, accessed June 8, 2017.
6 See the description of the mark, n. 1.
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of the Registrant’s Mark.”7 Although marks must be considered in their entireties, it
is settled that one feature of a mark may be more significant than another, and it is
not improper to give more weight to this dominant feature in determining the
commercial impression created by the mark. In re Nat'l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”). When a mark
comprises both a word and a design, however, the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services. See
In re Viterra Inc., 101 USPQ2d at 1908 (“In the case of a composite mark containing
both words and a design, ‘the verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed.’”) (citing CBS Inc. v. Morrow,
708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). In this case,
Registrant’s mark will be “read” from top to bottom, as “THE BEAN BAG … CAFÉ”
and customers will use this wording when calling for Registrant’s goods or services.
See Presto Prods. Inc. v. Nice-Pak Prods., 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”). Moreover, even though the term “CAFÉ” in
Registrant’s mark has been disclaimed, it is far larger than the other wording in the

7 9 TTABVUE 13.
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mark, and “anchors” the design in such a way that adds to the overall dominance of
the wording as compared with the design.
Applicant’s reliance on In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) and In
re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009), for the
proposition that the design should be considered dominant here, is misplaced. In
Covalinski, the wording in the applicant’s mark was merged together with the design,
with some of the letters sized so small as to be practically illegible. In White Rock, the
common term, VOLTA, was scarcely noticeable in the registered mark. Here, the
common wording carries strong trademark significance (BEAN BAG is arbitrary or
fanciful or, at worst, suggestive, for beverages such as coffee and tea) and in the cited
mark forms part of a complete phrase that is prominently displayed above and below
the design, in stylized script and with the bottom word, CAFÉ, shown in large font.
Even if a consumer were to initially notice the design, it does not dominate the mark
as a whole. See, e.g., The Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
for men’s cologne, hair spray, conditioner and shampoo is likely to cause confusion
with the mark CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER and design
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for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL
for gin); In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA
1972) (WEST POINT PEPPERELL and design for fabrics and linens
confusingly similar to WEST POINT for woolen piece goods).
For these reasons, the first du Pont factor favors a finding of likelihood of
confusion.
Similar Marks in Use by Third Parties
Applicant contends the term BEAN BAG (or BEAN BAGS) “is weak as applied to
coffee-related goods such that it is unlikely that consumers will be confused by the
registration of Applicant’s Mark.”8 Applicant relies on six unregistered, third-party
uses of “BEAN BAG” or “BEAN BAGS” in connection with coffee and the sale of coffee
via cafés or coffee houses to show weakness of the term. These are:
• Bean Bag Cafe in San Francisco, California.9
• The Bean Bag Deli & Catering Co. in Rockville, Maryland.10
• The Bean Bag Coffee House in Richmond, Wisconsin.11
• The Bean Bag Cafe in Philadelphia, Pennsylvania.12
• Bean Bags Coffee in Elma, Washington.13

8 9 TTABVUE 18.
9 At http://beanbagcafesf.com/ and https://www.facebook.com/Bean-Bag-Cafe-75539089164/,
Exhibit B.
10 At http://www.thebeanbag.com/about-us, Exhibit C.
11 At https://www.facebook.com/The-Bean-Bag-Coffee-House-1 13961445302566/, Exhibit D.
12 At http://whitefinder.com/philadelphiapa/the-bean-bag-cafe-2157627726.html, Exhibit E.
13 At https://www.facebook.com/pages/Bean-Bags-Coffee/137084099679915, Exhibit F.
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• Bean Bag Cafe in Syracuse, New York.14

Applicant downloaded and filed screen shots of these company’s web pages and/or
Facebook pages from the Internet as attachments to its June 17, 2016 Request for
Reconsideration, TSDR 12-30, Exhibits B-G. Applicant also submitted printouts from
the Office’s TSDR (Trademark Status & Document Retrieval) database regarding two
registered marks that use the term “BEAN BAGS.”15 Applicant further submitted the
first 200 of 250 applications and registrations in International Class 30 in which the
term “bean” or “beans” was found in the “word mark” field, retrieved from the USPTO
TESS (Trademark Electronic Search System) database.16
These references are insufficient to show that the term BEAN BAG is weak for
coffee or tea. The list from TESS is of little probative value because it only lists the
application serial number or registration number, mark, and status of the
applications or registrations (“live” or “dead”).17 We have no information as to the
goods or services in the listed registrations and applications and we are not privy to
the records in the files of those cases. Without copies or electronic printouts of the
applications or registrations, the applications and registrations appearing on the list
are not properly of record. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644

14 At http://www.yelp.com/biz/bean-bag-cafesyracuse, Exhibit G.
15 Reg. Nos. 4778230 and 3003317. See Applicant’s January 21, 2016 response to Office
Action, TSDR p. 2-14, Exhibit A.
16 January 21, 2016 Response to Office Action. Three of the marks in the list are “dead.”
17 Indeed, the applications are of no probative value. See, e.g., In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016) (third-party application is “evidence only that the
application was filed on a certain date”); Interpayment Services Ltd. v. Docters & Thiede, 66
USPQ2d 1463, 1468 n.6 (TTAB 2003).
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n.11 (TTAB 2011) (stating that “the Board’s well-established practice is not to take
judicial notice of registrations that reside in the USPTO”); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 n.3 (TTAB 1994). As to the registrations for which Applicant
did submit a copy thereof, only one of the three has any probative value. Reg. No.
2807236 for the mark YOU CAN’T BAG A BETTER BEAN is not relevant because it
does not use the term BEAN BAG(S), and Reg. No. 3003317 for the mark THE
ORIGINAL COFFEE BEAN BAGS is not relevant because it is for handmade
decorative pillows; moreover, it has been cancelled.18 Reg. No. 4778230 for the mark
GRADY'S COLD BREW BEAN BAGS for “iced coffee concentrate” is relevant, but
this mark has limited probative value as it includes the name “GRADY’S” as an
identifier of source plus the additional wording “COLD BREW,” making it more
dissimilar in commercial impression from the cited registration than Applicant’s
mark. This single registration is simply insufficient as a basis for finding that BEAN
BAGS is weak. In any event, the Board is not bound by the actions of examining
attorneys in allowing the marks for registration. “It has been said many times that
each case must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227,
1229 (TTAB 2010) (internal citation omitted). See also In re Boulevard Entm’t, 334
F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“the [US]PTO must decide each

18 A cancelled registration “is not evidence of anything except that the registration issued; it
is not evidence of any presently existing rights in the mark shown in the registration, or that
the mark was ever used.” TBMP §704.03(b)(1)(A) (Jan. 2017); see also Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)
(cancelled registration does not provide constructive notice of anything).
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application on its own merits, and decisions regarding other registrations do not bind
either the [USPTO] or [the reviewing] court.”).
Turning to the third-party websites for restaurants or cafes that use the term
“BEAN BAG” (or “BEAN BAGS”) as part of their corporate name, we recognize that
“extensive evidence of third-party use and registrations is ‘powerful on its face,’ even
where the specific extent and impact of the usage has not been established.” 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) (citing Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed.
Cir. 2015)). Here, the website evidence suffers from being too few in number, and the
evidence only goes to the possible weakness of the term for restaurant services, not
for coffee per se, as the websites do not use the term for beverages, but only as the
name of the restaurant or café.19 We do not find that the third-party uses are so
extensive as to constitute “powerful” evidence of weakness. Cf. Jack Wolfskin, 116
USPQ2d at 1136 (third-party weakness evidence characterized as “voluminous”).
The sixth du Pont factor is neutral.
Other Considerations
Applicant made of record a copy of Reg. No. 4947277 for the mark:

19 The Bean Bag Café in San Francisco does use “Bean Bag” in connection with a food item.
It advertises “sweet and savory crepes,” including the “magical Bean Bag [crepe], with orange
espresso caramel sauce.” June 17, 2016 Request for Reconsideration, Exhibit B. The use of
the term as the name of a food item, however, does not make it a weak mark for coffee.
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for “coffee; prepared coffee and coffee-based beverages; coffee based beverages.” This
registration is owned by Applicant.
Applicant argues that because this registration issued without citation to
Registrant’s mark, the applied-for mark can also exist on the Principal Register with
the cited mark. But Applicant’s prior registration contains many additional elements
that distinguish it from the applied-for mark. Therefore, we do not consider the
issuance of Applicant’s earlier registration to be a dispositive factor against a finding
of likelihood of confusion vis-à-vis the present application.
Applicant further argues that because the record contains no evidence of actual
confusion or that any confusion would be substantial, these du Pont factors favor
Applicant. However, “the lack of actual confusion is not particularly significant in an
ex parte case like this where there is no chance for the registrant to show what
opportunity for confusion there is based on registrant’s use and advertising of its
mark.” In re Ithaca Industries, Inc., 230 USPQ 702, 704 (TTAB 1986). Applicant also
argues that the Examining Attorney did not consider the fame of Registrant’s mark
or whether its mark is used as a house mark, “family” mark, or product mark, and
that the remaining factors “cannot weigh against Applicant” because they are
“inapposite.” We agree that inapposite or neutral factors do not weigh into our
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decision. Not all of the du Pont factors are relevant to every case, and only factors of
significance to the particular mark need be considered. In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). We have considered all of the
arguments and evidence of record as they pertain to the du Pont likelihood of
confusion factors relevant to the decision herein. See, e.g., Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1560 (Fed. Cir. 2001) (“While it must
consider each factor for which it has evidence, the Board may focus its analysis on
dispositive factors, such as similarity of the marks and relatedness of the goods.”).
Those factors for which we have not made specific findings are considered neutral
and have no bearing on our decision.
Summary
In view of the facts that the marks are similar and the goods include legally
identical products, move in identical trade channels and are marketed to the same
consumers, we find that Applicant’s mark so closely resembles the registered mark
as to be likely to cause confusion, mistake or deception as to the source of Applicant’s
goods.
Decision: The refusal to register application Serial No. 79148196 under
Section 2(d) of the Trademark Act is affirmed.