Lodestar Anstaltv.Goldmarks Company

Trademark Trial and Appeal Board

Mar 24, 2020

91237570 (T.T.A.B. Mar. 24, 2020)

Mailed: March 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lodestar Anstalt

v.

Goldmarks Company
_____

Opposition No. 91237570
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William J. Seiter of Seiter Legal Studio for Lodestar Anstalt, Plaintiff.

Wendy Peterson of Not Just Patents LLC for Goldmarks Company, Defendant.
_____

Before Ritchie, Adlin, and Dunn, Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:

Applicant Goldmarks Company seeks registration of the mark INSTANT KARMA
in standard characters for “tortilla chips.”1 In its notice of opposition, Opposer
Lodestar Anstalt pleads ownership of two registrations of the identical mark
INSTANT KARMA, for the following goods:2

1 Application Serial No. 87458171, filed May 21, 2017 under Section 1(b) of the Trademark
Act, based on an alleged intent to use the mark in commerce.
2 Both pleaded registrations issued July 11, 2017 under Trademark Act Section 66(a).
This Opinion Is Not a
Precedent of the TTAB

Opposition No. 91237570

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Registration No. 5238514
International Class 32
beers; mineral and aerated waters; cola; soft drinks, namely, pop; lemonade;
carbonated soft drinks; low calorie soft drinks; non-carbonated soft drinks;
fruit drinks and fruit juices; syrups and preparations for making beers,
mineral and aerated waters, cola, pop, carbonated drinks, soft drinks,
lemonade, carbonated soft drinks, low calorie soft drinks, non-carbonated soft
drinks, fruit drinks and fruit juices

Registration No. 5238557
International Class 9
sunglasses; sunglass lenses; sunglass cases; frames for sunglasses; straps for
sunglasses; chains for sunglasses; spectacles; optical glasses; anti-dazzle
spectacles; anti-glare glasses; binoculars; contact lenses; optical lenses; digital
music downloadable from the Internet

International Class 14
jewellery, precious stones; horological and chronometric instruments; watches;
decorative action figurines of precious metal; amulets; ankle bracelets; badges
of precious metal; bands for watches; bangle bracelets; bangles; beads for
making jewellery; body piercing rings; body piercing studs; bottle caps of
precious metal; bracelets; bracelets and watches combined; brooches; charms;
charity bracelets; clocks; collectible coins; souvenir pressed coins;
commemorative coins; costume jewellery; cufflinks; ear clips; ear studs;
earrings; fake jewellery; figurines for ornamental purposes of precious stones,
gold, silver or precious metals; fobs of precious metal for keys; imitation
jewellery; jewellery boxes; jewellery cases; key chains as jewels; key charms of
precious metal; key fobs of precious metal; lapel pins; personal ornaments,
made of or coated with precious or semi-precious materials or stones, or
imitations thereof; trinkets coated with precious metal; tie pins; tie holders in
the nature of tie fasteners; tie clips

International Class 25
clothing, namely, bandanas, bathrobes, belts, beachwear, shirts, T-shirts,
sweatshirts, cardigans, jumpers, jerseys, jackets, underwear, swimwear, and
scarves; footwear; headgear, namely, sun visors, cap peaks, hats, caps, and
headbands

International Class 32
soft drinks; energy drinks; fruit drinks and fruit juices; mineral and aerated
waters; preparations for making beverages, namely, soft drinks, energy drinks,
and fruit drinks; beers; lagers; non-alcoholic beers; non-alcoholic lagers;
preparations for making beers, lagers, non-alcoholic beers and non-alcoholic
lagers
Opposition No. 91237570

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As its ground for opposition, Opposer alleges that use of Applicant's mark would
be likely to cause confusion with Opposer's registered marks. In its answer, Applicant
denies the salient allegations in the notice of opposition. Applicant also asserts a
number of “affirmative defenses” which merely amplify its denials.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant's involved application. In addition, Opposer introduced a notice
of reliance on TESS status and title copies of its pleaded registrations, the application
files for the registrations; and Applicant's responses to Opposer's discovery requests.3
Applicant submitted a notice of reliance on Opposer’s responses to Applicant’
discovery requests, including partially redacted responses to requests for admission.4
As rebuttal, Opposer submitted an unredacted copy of its responses to requests for
admission.5
II. Standing and Priority
Opposer's pleaded registrations establish its standing.6 See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);

3 11 TTABVUE. TTABVUE refers to the Board’s electronic docket, the location on the USPTO
website where the publicly viewable trial record and briefs can be found. The first number is
the docket entry and the second, if applicable, is the page within the entry.
4 15 TTABVUE.
5 16 TTABVUE.
6 11 TTABVUE 8-12 and 17-22.
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Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).7
In addition, because Opposer pleaded and submitted status and title copies of its
registrations, which Applicant has not counterclaimed to cancel, priority is not at
issue with respect to the mark and goods identified in the registrations. King Candy
Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)
(“Section 2(d) says an applicant can register, unless his mark is likely to cause
confusion with a mark "registered in the Patent Office … [and] the board's
requirement that the registrant-opposer also be a prior user impermissively negates
the statutory distinction (‘or’) in Section 2(d) between a registered mark and a
previously-used-but-unregistered mark”).
III. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (DuPont factors). Opposer bears the burden of proving

7 Applicant errs in its contention (19 TTABVUE 11) that there is “no evidence in the record
to support opposer’s claims in the Notice of Opposition (preamble and ¶1 and 2) that it is a
trademark owner for purposes of standing. Opposer had not shown that it has any type of
requisite commercial activity for any of its 80 pleaded goods or any of its pleaded
registrations.” For purposes of establishing standing in this opposition proceeding, Opposer
is not required to prove that its marks are valid, but may rely on the statutory presumption
of validity obtained by registration. See Trademark Act Section 7(b). If Applicant believes the
pleaded marks are invalid, Applicant was required to bring a compulsory counterclaim to
cancel the registrations. See Trademark Rule 2.106(b)(3)(b)(i); Cosmetically Yours, Inc. v.
Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970); Chicago Bears Football
Club v. 12th Man/Tenn. LLC, 83 USPQ2d 1073, 1083 (TTAB 2007).
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its claim of likelihood of confusion by a preponderance of the evidence. Cunningham
v. Laser Golf Corp., 55 USPQ2d at 1848. In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. 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.”). We must consider each relevant du Pont factor for
which there were arguments and evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010)).
A. Similarity or Dissimilarity of the Marks
The first DuPont factor requires consideration of "[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression." DuPont, 177 USPQ at 567. Opposer has registered, and Applicant seeks
to register, the identical term INSTANT KARMA in standard characters.
Neither party contends or presents any evidence that the term INSTANT KARMA
has a particular connotation as applied to its goods, much less that the term has one
meaning for its goods and a different meaning for the other party’s goods. Cf.Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (“Opposer's COACH mark, when applied to fashion accessories is clearly
either arbitrary or suggestive of carriage or travel accommodations [e.g., stagecoach,
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train, motor coach, etc.] thereby engendering the commercial impression of a
traveling bag [e.g., a coach or carriage bag]. On the other hand, applicant's COACH
marks call to mind a tutor who prepares a student for an examination.”). Because the
marks INSTANT KARMA are identical in appearance, identical in pronunciation,
and presumed to have the same meaning and commercial impression, this DuPont
factor strongly favors finding a likelihood of confusion.
B. Similarity or Dissimilarity of the Goods, Channels of Trade, and
Purchasers
We next turn to consider the second, third, and fourth DuPont factors regarding
the similarity or dissimilarity between the goods, their trade channels, and their
buyers. To support a finding of likelihood of confusion, it is sufficient that the goods
are related in some manner, or would be encountered by the same persons in
situations that would give rise, because of the marks, to a mistaken belief that they
originate from the same source. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1722. Where identical marks are involved, as is the case here, the degree
of similarity between the goods that is required to support a finding of likelihood of
confusion declines. Cai v. Diamond Hong, Inc., 127 USPQ2d at 1801.
We make our determination regarding the similarities between the parties' goods,
channels of trade and buyers based on the goods as they are identified in the
application and registrations. Octocom Sys. Inc. v. Houston Computers Servs., Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The application
and registrations themselves may provide evidence of the relationship between the
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goods. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1005 (Fed. Cir. 2002); Merrit Foods v. Associated Citrus Packers, Inc., 222 USPQ 255
(TTAB 1984).
Opposer offers no evidence that the goods, trade channels or buyers are related.
Opposer introduced Applicant’s discovery responses, and its notice of reliance states
that the responses are relevant to Opposer’s priority, and demonstrate that Applicant
has not yet used its mark in commerce.8 Our review of the record confirms that
Applicant was asked only about its actual trademark use in discovery, and its
responses supply no facts regarding Applicant’s intended future use or channels of
trade.9 Applicant made no admissions regarding any overlap or relationship between
the parties’ goods.10
As set forth above, the application identifies tortilla chips, and Opposer’s pleaded
registrations list a variety of goods, including beverages in International Class 32.

8 15 TTABVUE 2-4.
9 15 TTABVUE 36-43, 64-68.
10 15 TTABVUE 51-55. Because evidence of record may be referred to by any party for any
purpose permitted by the Federal Rules of Evidence, we also reviewed Applicant’s evidence
for any facts supporting a relationship between the goods. See Trademark Rule 2.122(a).
Applicant’s notice of reliance states that Opposer’s discovery responses demonstrate that
Opposer has no evidence of use in commerce or bona fide intent to use the mark in commerce.
16 TTABVUE 2-3. As noted above, in the absence of a counterclaim, collateral attacks on the
registration are improper and given no consideration. In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Applicant’s notice of reliance also states that
Opposer’s mark has not been promoted to or recognized by the U.S. purchasing public, as
shown by the absence of any documents relevant to such promotion or recognition. 16
TTABVUE 2, 33-40. Nothing in the record contradicts our conclusion that the only evidence
of a relationship between the goods, their trade channels, and their buyers is what can be
gleaned from the face of the application and pleaded registrations.
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With respect to the relationship between the parties’ goods, their trade channels, and
their buyers Opposer contends in its brief:
The goods of the parties are related, inasmuch as tortilla chips in America are
normally enjoyed together with a refreshing beverage, typically beer or soft
drinks, and tortilla chips are carried in the same channels of trade, including
grocery stores, supermarkets, liquor stores and convenience stores, as carry
Opposer’s beverage goods. 17 TTABVUE 10-11.

Tortilla chips and beer, soft drinks and other light beverages are relatively
inexpensive, everyday consumer items. 17 TTABVUE 16.

Opposer’s factual assertions in its brief are mere argument without evidentiary
support. See Cai v. Diamond Hong, Inc., 127 USPQ2d at 1799 (“Mr. Cai's Main Brief
contains numerous assertions of fact. … This information is not evidence under any
of the relevant rules”). See also Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276,
76 USPQ2d 1616, 1622 (Fed. Cir. 2005) ("Attorney argument is no substitute for
evidence."). Compare In re Mars, Inc., 741 F.2d 395, 222 USPQ 938, 938 (Fed. Cir.
1984) (“The PTO opinion was that ‘candy bars and fresh citrus fruits bear such a close
relationship’ that there would be a likelihood of confusion. There being no evidence
in this ex parte case, this is merely a matter of opinion with which we respectfully
disagree.”).
The cases cited by Opposer for the proposition that different goods sold under the
same or highly similar marks may be likely to create confusion do not constitute
evidence in this case, and do not provide useful guidance here. Cf. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)
(“Evidence of complementary use may be given more or less weight depending on the
nature of the goods, but this evidence may not be ignored. The extent to which
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particular food products are deemed related will depend on the facts of each
individual case.”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1431 (TTAB 2013) (“Opposer has submitted marketplace evidence to demonstrate
that wine and water are related goods, as well as copies of use-based, third-party
registrations showing that the goods are of the type that would emanate from a single
source. Opposer's witness, Ms. Hampton testified that she purchased several
different brands of water from different winery tasting rooms.”); Gen. Mills, Inc. v.
Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1598 (TTAB 2011) (“the record
clearly supports the complementary and competitive relationship between cereal and
yogurt”); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1890 (TTAB 2008) (“We
find that the uncontroverted testimony of Mr. Felix and the evidence of record
demonstrates an association between urban lifestyle clothing and custom automotive
accessories.”).
Even if Opposer had introduced evidence that the channels of trade and classes of
consumers overlap, which it did not, we may not find the parties’ goods related
without evidence. We disagree that this case is comparable to those cases in which
the opposed application and cited registration use terms which logically encompass
one another, or overlap, and thus themselves demonstrate the necessary relationship
between the goods. There is no overlapping language here. Thus, it is not clear from
the face of the application and registration that the goods are related. Compare Bose
Corp. v. QSC Audio Prods., Inc., 63 USPQ2d at 1310 (“On the face of the registrations
themselves, QSC's [amplifiers and power amplifiers] and the ACOUSTIC WAVE
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[loudspeaker systems and music systems consisting of a loudspeaker system and
amplifier and at least one of a radio tuner, compact disc player and audio tape
cassette player and loudspeaker systems] are related.”); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“The ‘data
and information processing’ description in the ITU application is very similar to HP's
registrations covering consulting services, whether for data processing or for data
processing products. The ‘electronic transmission of data and documents via
computer terminals’ description in the ITU application is very similar to HP's
registrations covering facsimile machines, computers, and computer software. The
‘conversion from one media form to another media’ description in the ITU application
is similar to HP's registrations covering programs for information manipulation and
apparatus for data acquisition and processing.”); Merrit Foods v. Associated Citrus
Packers, Inc., 222 USPQ 255 (TTAB 1984) (“Clearly, the genus ‘frozen confections’
must be deemed to embrace fruit-flavored or fruit-filled ice cream and sherbert bars
and cups and even frozen fruit juice treats, all of which, as we have said, might well
be regarded as a product that a citrus grower would market or sponsor, using its own
fruit ingredients, as an adjunct or companion item to fresh fruit distribution and
sales.”).
“[A]nalysis under DuPont requires a balancing of the relevant factors.” Majestic
Distilling, 65 USPQ2d at 1027. Most significantly in our weighing of the DuPont
factors, Opposer has failed to show on this record that its beverages are related to
tortilla chips. On balance, and taking into account the totality of the evidence of
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record, we find that Opposer has failed to prove by a preponderance of the evidence
that consumers who are familiar with Opposer's INSTANT KARMA mark for
beverages, or any of its other registered goods, are likely to mistakenly believe that
Applicant's INSTANT KARMA tortilla chips originate with, or are sponsored or
authorized by, Opposer under Section 2(d) of the Trademark Act.
Decision: The opposition is dismissed.