Island Oasis Frozen Cocktail Co., Inc.

Trademark Trial and Appeal Board

May 30, 2002

No. 75883870 (T.T.A.B. May. 30, 2002)

Mailed: May 30, 2002
Paper No. 10
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Island Oasis Frozen Cocktail Company, Inc.
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Serial No. 75/883,870
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John L. Welch of Foley, Hoag & Eliot LLP for applicant.

Stephanie M. Davis, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Simms, Wendel and Drost, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Island Oasis Frozen Cocktail Company, Inc.
(applicant), a Massachusetts corporation, has appealed from
the final refusal of the Trademark Examining Attorney to
register the mark ISLANDER for non-alcoholic bases and
concentrates used in making frozen drinks, both alcoholic
and non-alcoholic; bases and concentrates for making
smoothies; frozen drinks, both alcoholic and non-alcoholic;
smoothie beverages consisting primarily of fruit base, ice,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/883,870
2
and ice cream or yogurt; and smoothie beverages consisting
primarily of fruit base and ice.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
USC §1052(d), on the basis of Registration No. 1,032,576,
issued February 3, 1976 (renewed) for the mark ISLANDER
COFFEE HOUSE (“COFFEE HOUSE” disclaimed) for restaurant
services. Applicant and the Examining Attorney have
submitted briefs but no oral argument was requested.
It is the Examining Attorney’s position that, because
disclaimed and descriptive matter is less significant and
less dominant, and because greater weight may be given to
the dominant part of a mark, applicant’s mark ISLANDER and
registrant’s mark ISLANDER COFFEE HOUSE are similar. That
is to say, applicant’s mark is identical to the dominant
part of registrant’s mark. With respect to the goods,
because a “coffee house” is defined as a “restaurant where
coffee and other refreshments are served,” registrant’s
restaurant services could include the serving of frozen
drinks and smoothie beverages, the Examining Attorney
argues. Also, the Examining Attorney maintains that coffee
is sometimes served frozen or chilled with or without
liquor. Applicant’s goods, according to the Examining

1 Application Ser. No. 75/883,870, filed December 30, 1999, based upon an
allegation of a bona fide intention to use the mark in commerce.
Serial No. 75/883,870
3
Attorney, could be offered in registrant’s establishments.
In any event, the Examining Attorney contends that
registrant could expand its field of trade to include
applicant’s goods. Finally, the Examining Attorney asks us
to resolve any doubt in favor of the prior registrant.
In support of her refusal, the Examining Attorney
submitted copies of third-party registrations covering both
cocktails and espresso beverages on the one hand and
restaurant services on the other.2
Applicant argues that the respective marks are
different in that the words “COFFEE HOUSE” in registrant’s
mark indicate the nature of registrant’s services and play
a “critical role” in the perception of registrant’s mark.
Concerning the respective goods and services, aside from
arguing that there is no per se rule with respect to
finding likelihood of confusion in cases involving
restaurant services and food products, applicant maintains
that its frozen beverages and concentrates would not be
found in a coffee house. It is applicant’s position that
there is no evidence that the public might expect frozen
drinks to be sold under the same mark as restaurant

2 These registrations are for the marks CHI-CHI’S for restaurant services
and for prepared alcoholic cocktails, T.G.I. FRIDAY’S for restaurant
and bar services and for “wines, liqueurs and spirits; namely, prepared
alcoholic cocktails,” and STARBUCKS COFFEE for restaurant services
featuring coffee and espresso beverages.
Serial No. 75/883,870
4
services, and that there is no evidence that registrant
would or could expand into applicant’s different goods.
Further, with respect to the dictionary definition,
applicant argues that there is no proof that “other
refreshments” include frozen drinks and smoothie beverages.
Finally, applicant contends that none of the third-party
registrations made of record by the Examining Attorney
specifically include applicant’s goods.3
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that confusion is
not likely. First, with respect to the marks, they
obviously share the dominant origin-indicating word
“ISLANDER,” but differ since the registered mark includes
the generic words “COFFEE HOUSE.” While the respective
marks must, of course, be compared in their entireties,
including any disclaimed matter, our principal reviewing
court has indicated that, in articulating reasons for

3 Applicant has objected to the Web page printouts of definitions from “A
Seattle Lexicon” submitted with the Examining Attorney’s brief, on the
ground that these definitions are not from a well-known or recognized
reference work. Applicant points out that this reference is an
“Interpretive guide for non-Northwesterners who want to get the inside
line on the local lingo.”
Because evidence may not be submitted with an appeal brief
(Trademark Rule 2.142), we may only consider this evidence if it is
matter of which we may take judicial notice. We agree with applicant
that this source is not sufficiently reliable to allow judicial notice
to be taken. We do, however, take judicial notice of the definitions
from The American Heritage College Dictionary (Third Edition 1993),
Webster’s New Collegiate Dictionary (1981) and Webster’s New Twentieth
Century Dictionary (Second Edition 1983) submitted with applicant’s
appeal brief.
Serial No. 75/883,870
5
reaching a conclusion on the issue of likelihood of
confusion, "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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For instance, according to
the court, "that a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark ...." 224 USPQ at 751. Nevertheless, in
this case the words “COFFEE HOUSE” lend a different
significance and commercial impression to the registered
mark than any meaning or impression conveyed by applicant’s
mark.
With respect to applicant’s goods, such as its non-
alcoholic frozen drinks and smoothie beverages consisting
of fruit base and ice, the Examining Attorney has
introduced no specific evidence from which we might
conclude that such goods would be sold in coffee house-type
restaurants.4 Nor is there any evidence that coffee house
restaurants are likely to serve applicant’s alcoholic

4 Both applicant and the Examining Attorney have assumed, as do we, that
registrant’s services are coffee house restaurant services. The
Examining Attorney has not argued that we should construe registrant’s
services to be broader than that.
Serial No. 75/883,870
6
beverages. Rather, the only evidence of record pertains to
restaurants that prepare and serve food as well as
alcoholic cocktails, and a coffee house restaurant that
serves coffee and espresso beverages. Suffice it to say
that, because there is no per se rule for finding
likelihood of confusion in cases involving restaurant
services and specific food or beverage items, we cannot
conclude from this record that the Examining Attorney has
demonstrated that applicant’s frozen drinks or its smoothie
beverages containing fruit base and ice (or any other of
its beverages) would be sold in registrant’s restaurant
such that purchasers would believe that applicant’s goods
come from registrant’s coffee house restaurant. Moreover,
applicant’s concentrates and bases are even more unlikely
to be sold in registrant’s coffee house restaurants.
We should also point out that the Examining Attorney
has not presented any evidence, or even argued, that coffee
house restaurants (or any restaurants for that matter) have
or are likely to sell their beverage products in grocery
stores and supermarkets, such that consumers may have
become accustomed to seeing such restaurant service marks
on beverage products available in retail stores. Such
evidence might tend to indicate that purchasers, aware of
registrant’s restaurants, who then encounter beverage
Serial No. 75/883,870
7
products such as some of those sold by applicant, would
believe that those products come from or are sponsored or
licensed by the restaurant.
We conclude that the Examining Attorney has not
demonstrated on this record that confusion is likely.
Decision: The refusal of registration is reversed.