Barrie House Coffee Co., Inc.

Trademark Trial and Appeal Board

Aug 7, 2007

No. 76592697 (T.T.A.B. Aug. 7, 2007)

Mailed:
August 7, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barrie House Coffee Co., Inc.
________

Serial No. 76592697
_______

Myron Amer of Myron Amer, P.C. for Barrie House Coffee Co.,
Inc.

Heather Biddulph, Trademark Examining Attorney, Law Office
104 (Chris Donniger, Managing Attorney).
_______

Before Cataldo, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On May 17, 2004, Barrie House Coffee Co., Inc. filed
an intent-to-use trademark application (Serial No.
76592697) for the mark SUPREME CAPPUCCINO for goods
ultimately described as “packaged coffee beans.” Applicant
disclaimed the exclusive right to use the word
“cappuccino.” Registration was refused under Section 2(d)
of the Trademark Act of 1946, 15 U.S.C. §1052(d), because
applicant’s mark so resembles the mark CAPPUCCINO SUPREME
for “flavored instant cappuccino” as to be likely to cause
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76592697
2
confusion.1 When the refusal was made final, applicant
appealed. The appeal is fully briefed. For the reasons
set forth below, the refusal is affirmed.

Evidentiary Issues
The Trademark Examining Attorney objected to the
“Evidentiary Declaration” of applicant’s Chief Operating
Officer that applicant filed with its appeal brief on the
ground that the declaration was untimely.2 Applicant argues
that the objection is misplaced, but fails to explain why
the objection is misplaced.
The objection to applicant’s declaration is well
taken. Trademark Rule 2.142(d), 37 C.F.R. §2.142(d).
Trademark Rule 2.142(d) reads as follows:
(d) The record in the application should
be complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the Board
by the appellant or by the examiner
after the appeal is filed. After an
appeal is filed, if the appellant or the
examiner desires to introduce additional
evidence, the appellant or the examiner
may request the Board to suspend the

1 Registration No. 3019247, issued under Section 2(f) of the
Trademark Act of 1946 on November 29, 2005. Registrant
disclaimed the exclusive right to use the word “cappuccino.”

2 In its Appeal Brief, applicant refers the declaration as the
“SECOND EVIDENTIARY DECLARATION.”
Serial No. 76592697
3
appeal and to remand the application for
further examination.

Applicant’s evidentiary declaration was filed after
the appeal was filed. As indicated above, it was filed
with applicant’s appeal brief. Accordingly, the objection
is sustained and the declaration will not be given any
consideration.3

Likelihood of Confusion
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 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 Company, 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 goods and/or services. See

3 Even if we were to consider the declaration, it would not
change our opinion. The declaration does not introduce any
evidence. It simply presents argument or the witness’ opinion
regarding why the marks SUPREME CAPPUCCINO and CAPPUCCINO SUPREME
engender different commercial impressions. Opinion evidence as
to the similarity of the marks is not binding on the Board
because the Board must independently evaluate the facts in a case
and arrive at its own conclusion. Freedom Federal Savings and
Loan Association v. Heritage Federal Savings and Loan
Association, 210 USPQ 227, 230 n.1 (TTAB 1981). See also In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
Serial No. 76592697
4
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098,
192 UPSQ 24 (CCPA 1976); In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and
commercial impression.

Applicant’s mark, SUPREME CAPPUCCINO, is the reverse
combination of the registered mark, CAPPUCCINO SUPREME.
Where the only difference between the marks is the
transposition of the elements that compose the marks, and
where this transposition does not change the commercial
impression created by the marks, there may be a likelihood
of confusion. In re Wine Society of America Inc., 12
USPQ2d 1139, 1142 (TTAB 1989); In re Nationwide Industries
Inc., 6 UPSQ2d 1882, 1884 (TTAB 1988); In re General Tire &
Rubber Co., 213 UPSQ 870, 871 (TTAB 1982). On the other
hand, if the transposition of words creates a distinctly
different commercial impression and/or the marks are
readily distinguishable in sound and appearance, then
confusion is not likely. In re Best Products Co., 231 UPSQ
988, 989 (TTAB 1986); Bank of America Nat’l Trust v.
American Nat’l Bank, 201 USPQ 842, 845 (TTAB 1978).
Serial No. 76592697
5
Both marks will be perceived as meaning excellent
cappuccino.4 The transposition of the words in the marks,
in our opinion, do not do anything to change the commercial
impression. In its Appeal Brief, applicant contends that
the transposition of the words does not create a similar
commercial impression or meaning, but applicant does not
explain why.5 However, in its response to the December 17,
2004 Trademark Office Action, applicant explained that when
the word “supreme” is used first, it means “of the highest
quality,” however, when it is used second (as in CAPPUCCINO
SUPREME), it means “last or final (i.e., “the end product
instantly prepared for consumption using the trademark-
identified product”). Applicant’s argument is not
persuasive. When used in connection with food products,
specifically coffee, the meaning of the word “supreme” is
readily understood as “highest in quality,” rather than

4 “Supreme” means “1. highest in rank, power, etc. 2. highest
in quality, achievement, etc. 3. highest in degree 4. final;
ultimate.” Webster’s New World Dictionary and Thesaurus, p. 637
(2nd ed. 2002). The Board may take judicial notice of dictionary
definitions. B.V.D. Licensing Corp. v. Body Action Design, Inc.,
846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988).

5 In the “Evidentiary Declaration” accompanying applicant’s
brief, the witness testifies that an “entirely different
commercial impression and meaning are obtained when CAPPUCCINO is
the first word,” but the witness does not explain why.
Serial No. 76592697
6
“last or final.”6 We doubt that many coffee consumers are
even aware that the word “supreme” means “last or final.”
Thus, to interpret CAPPUCCINO SUPREME as meaning cappuccino
as the end product instantly prepared for consumption does
not make sense, nor can we imagine consumers engaging in
that sort of convoluted logic to reach applicant’s
purported interpretation.
In view of the foregoing, we find that the similarity
of the marks is a factor that favors finding that there is
a likelihood of confusion.

B. The similarity or dissimilarity and nature of the
goods.

CAPPUCCINO SUPREME is registered for “flavored instant
cappuccino.” Applicant is seeking to register SUPREME
CAPPUCCINO for “packaged coffee beans.” Cappuccino is a
type of coffee.7 The products appeal to coffee drinkers.
Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ

6 In the “Evidentiary Declaration” attached to applicant’s Appeal
Brief, applicant’s witness testifies that applicant uses the word
“supreme” to extol the taste of its coffee “because the
CAPPUCCINO produced is SUPREME.” In other words, the cappuccino
produced is of the highest quality.

7 “Cappuccino” is a “coffee made with milk that has been frothed
up with pressurized steam.” The New Oxford American Dictionary,
p. 254 (2005).
Serial No. 76592697
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517, 520 (TTAB 1975) (“In determining whether products are
identical or similar, the inquiry should be whether they
appeal to the same market, not whether they resemble each
other physically or whether a word can be found to the
describe the goods of the parties”). In other words, the
issue is not whether a purchaser would be confused to the
extent of buying coffee beans when he/she really intended
to purchase instant cappuccino. Rather, the question is
whether a purchaser would be confused as to the source of
the respective goods because of the similarity of the
marks. In re Permagrain Products, Inc., 223 USPQ 147, 148
(TTAB 1984). Considering the close relationship of the
respective products, there is no doubt that coffee
purchasers will attribute coffee beans and instant
cappuccino sold under similar marks to a single source.
In support of this fact, the Examining Attorney
submitted twenty-seven (27) relevant use-based trademark
registrations listing coffee beans and instant coffee,
cappuccino, powdered coffee, or coffee beverages with milk
in the description of goods.8 Such registrations have

8 The Examining Attorney submitted thirty (30) total
registrations. One registration was a duplicate. There was an
error in the Trademark Office database for Registration No.
2919010 because the goods described in Classes 30 and 40 were
erroneously included in the registration. Registration No.
3114474 for the mark OLAM and Registration No. 3029497 for the
mark MUZZBUZZ DRIVE-THRU COFFEE were issued on the basis of
Serial No. 76592697
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probative value because they suggest that the listed goods
are of a type that may emanate from the same source. In re
Albert Trostel & Sons Co., supra; In re Mucky Duck Mustard
Co., Inc., supra.
Applicant contends that flavored instant cappuccino
and coffee beans are not related products for the following
reasons:
1. applicant is selling packaged coffee beans;

2. applicant’s coffee beans are purchased in retail
stores, such as supermarkets, that feature coffee
grinding machines; and,

3. “applicant’s customers would never shop in the
area of a retail store displaying a so-called
‘instant’ coffee.”9

Applicant’s reasoning and supporting declaration are
highly questionable. It is common knowledge that coffee
beans and instant coffee are sold in the same section of
supermarkets. Such a fact, as a matter of common
knowledge, is appropriate for judicial notice. Fed.R.Evid.
201(b); TBMP §704.04. See also, Wella Corp. v. California

applications filed under Section 66 of the Trademark Act of 1946
(International Registrations), and not based on use in commerce.
Registrations that are not based on use in commerce have very
little persuasive value to show that the listed goods may emanate
from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co., Inc.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

9 David Goldstein Declaration submitted with applicant’s August
29, 2006 response to a Trademark Office Action. David Goldstein
is applicant’s Chief Operating Officer.
Serial No. 76592697
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Concept, 558 F.2d. 1019, 194 USPQ 419, 422 (CCPA 1977) (“we
take judicial notice of the fact that home cold permanent
wave kits are, and have for many years, been sold directly
to nonprofessional consumer through retail outlets”).
Second, even if coffee beans and instant cappuccino
were sold in different sections of a supermarket, consumers
would still believe that coffee beans and instant
cappuccino were related because both products are coffee
products. Under applicant’s marketing scenario, because
consumers would encounter CAPPUCCINO SUPREME instant
cappuccino and SUPREME CAPPUCCINO coffee beans in different
sections of a supermarket they would not be able to make a
side-by-side comparison of the marks, and they would
therefore have to rely on their general recollections of
the marks. Roffler Industries, Inc. v. KMS Research Labs,
Inc., 213 USPQ 258, 263 (TTAB 1982) (purchasers normally
retain a general rather than a specific recollection of
trademarks); Times Mirror Magazines, Inc. v. Sutcliffe,
205 USPQ 656, 662 (TTAB 1979) (average person is not
infallible in his or her recollection of trademarks, and
more often than not retains only a general or overall
impression of a mark). A consumer familiar with
registrant’s CAPPUCCINO SUPREME instant cappuccino upon
encountering applicant’s SUPREME CAPPUCCINO coffee beans
Serial No. 76592697
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may mistakenly believe that the two coffee products come
from a single source. Accordingly, based on the facts of
this case, coffee beans and instant cappuccino would be
sold under circumstances likely to give rise to the
mistaken belief that the products emanate from the same
source.
For the preceding reasons, the similarity and nature
of the goods is a factor that favors finding that there is
a likelihood of confusion.

C. The similarity or dissimilarity of established, likely
to continue trade channels.

Because coffee beans and instant cappuccino are so
closely related, and because there are no restrictions or
limitations in either description of goods, we must assume
that the parties’ products move in the same channels of
trade, and are sold to the same class of purchasers,
namely, ordinary consumers who drink coffee. Morton-
Norwich, Inc. Products, Inc. v. N. Siperstein, Inc., 222
USPQ 735, 736 (TTAB 1984); In re Elbaum, 211 639, 640 (TTAB
1981). This would include not only consumers who prefer
fresh brewed coffee, but also those who cannot brew a fresh
pot of coffee or prepare a cup of cappuccino and,
therefore, must rely on instant cappuccino.
Serial No. 76592697
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This du Pont factor favors a finding of likelihood of
confusion.
Because the marks are very similar, if not virtually
identical, and applicant’s goods are closely related to the
goods in the cited registration, and both products are sold
in the same channels of trade, we find that applicant’s
mark, SUPREME CAPPUCCINO, when used in connection with
“packaged coffee beans,” so resembles the mark CAPPUCINO
SUPREME registered for “flavored instant cappuccino” as to
be likely to cause confusion.
Decision: The refusal to register is affirmed.