Barrie House Coffee Co., Inc.

Trademark Trial and Appeal Board

Dec 18, 2008

No. 76678951 (T.T.A.B. Dec. 18, 2008)

Mailed:
December 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barrie House Coffee Co., Inc.
________

Serial No. 76678951
_______

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

Jaclyn N. Kidwell, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).1
_______

Before Rogers, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Applicant seeks to register the term MOCCA in standard
characters, on the Principal Register, as a mark for goods
ultimately identified as “a coffee product, namely coffee
beans, and not including ground-coffee derived coffee.”
Two refusals to register the proposed mark resulted in this
appeal.

1 Examining attorney Darryl Spruill, also of Law Office 112,
examined the application until it was reassigned to Jaclyn
Kidwell for preparation and filing of the appeal brief.

This Opinion is Not a
Precedent of the TTAB
Ser No. 76678951
2
First, the examining attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), in view of the prior registration of the “MOCA”
and design mark shown below for “coffee and coffee
derivatives.”2

Second, the examining attorney has refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that MOCCA is descriptive of
applicant’s identified goods. While applicant had
attempted to amend the application to seek registration on
the Supplemental Register, to overcome that refusal, the
examining attorney refused such amendment because the
application is based on intent-to-use and applicant has not
filed an amendment to allege use.

2 Registration no. 2757778, issued September 2, 2003. Registrant
disclaimed the exclusive right to use the word “moca.”

Ser No. 76678951
3
After the examining attorney explained that applicant
could not amend the application to seek registration on the
Supplemental Register, applicant twice requested that such
amendment be deleted. See May 12, 2008 submission entitled
Notice of Appeal and Appeal Brief3 and July 15, 2008
submission entitled Appeal Brief, the latter of which
followed the examining attorney’s denial of applicant’s
request for reconsideration. Even though the examining
attorney clearly maintained a descriptiveness refusal
throughout prosecution, and notwithstanding that applicant
has acknowledged in its Reply Brief that the examining
attorney’s final refusal included a refusal under Section
2(e)(1), applicant nonetheless asserted in that same brief
that the examining attorney made such refusal on the merits
for the first time in the examining attorney’s appeal
brief. Applicant’s contention is belied by the record and
its request in its Reply Brief that we should “deem this
basis of the refusal to have been waived” is denied.4

3 The Board paralegal also treated this submission as including a
request for reconsideration, insofar as it was filed shortly
after the examining attorney’s final refusal and included an
amendment to the identification responsive to a requirement
included in the final refusal. Thus, the application was
remanded to the examining attorney.

4 Although applicant’s reply brief is not at all clear in its
discussion of the issue, it is possible applicant is in some way
attempting to draw a distinction between the examining attorney’s
refusal to allow applicant’s amendment to the Supplemental
Ser No. 76678951
4
Before addressing the refusals, a word is in order
about applicant’s identification of goods. The examining
attorney found applicant’s original identification of
“coffee and coffee products” indefinite. Applicant then
amended the identification to “coffee and coffee products,
namely, coffee beans,” which the examining attorney found
satisfactory. Nonetheless, when the examining attorney
persisted in the refusal of registration under Section
2(d), applicant further amended the identification to “a
coffee product, namely, coffee beans, and not including
coffee,” which, in applicant’s view, “obviates any
likelihood of confusion” with the mark in the cited
registration.
The examining attorney’s final refusal of registration
acknowledged and addressed the further amended
identification in regard to the Section 2(d) refusal, but
did not find it to obviate such refusal. Moreover, the
examining attorney noted that the amended identification
could be read to “imply that no goods are being provided,”

Register (a point in which the applicant had already acquiesced
by virtue of its two requests, prior to the reply brief, to
delete such amendment), and the examining attorney’s
descriptiveness refusal on the merits. Such distinction,
however, is of little significance, as the initial attempt to
amend to the Supplemental Register followed issuance of a
descriptiveness refusal on the merits and that refusal was
maintained throughout, regardless of applicant’s periodic
discussions of the Supplemental Register.
Ser No. 76678951
5
and required clarification of the exclusionary language.
Applicant then adopted the identification “a coffee
product, namely coffee beans, and not including ground
coffee-derived coffee,” and the examining attorney
acknowledged this in the Office action denying applicant
reconsideration of the final refusal. Accordingly, we
consider this the operative identification, notwithstanding
that the examining attorney’s brief recites the earlier
version of the identification found to be indefinite. We
consider the references in the brief to the earlier version
of the identification to have resulted from a word
processing error. In essence, then, the proposed mark is
for coffee beans.5
Descriptiveness
Turning to the substantive refusals of registration,
we consider first the refusal under Section 2(e)(1) because

5 The general and vague term “coffee product” only takes meaning
when qualified by “namely, coffee beans.” The significance of
the subsequent exclusionary language is questionable. It could
be read to exclude the beverage coffee, if derived from ground
coffee; but that does not appear to make much sense, as it would
appear that the beverage typically is made from ground coffee,
rather than from whole beans and, moreover, the beverage coffee
would not normally be encompassed by an identification of coffee
beans. In the alternative, the exclusionary language could be
read as an attempt to exclude ground coffee beans. Because it is
clear from the record that applicant limited the identification
in an attempt to avoid the Section 2(d) refusal, we conclude that
applicant has at least limited the identification to coffee beans
and, perhaps, even excluded ground coffee beans.

Ser No. 76678951
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our determination regarding the asserted descriptiveness of
the proposed mark may affect the strength accorded it in
our analysis of likelihood of confusion. The question
whether a proposed mark is merely descriptive is not
determined by asking whether one can guess, from the mark
itself, what the goods or services are, but rather by
asking, when the mark is seen on or in connection with the
goods or services, whether it immediately conveys
information about their nature. See In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
Applicant’s application to register MOCCA is based on
its intent-to-use the proposed mark in commerce for the
identified “coffee product, namely coffee beans, and not
including ground-coffee derived coffee,” or, put simply,
coffee beans.
The examining attorney has put in the record the
following dictionary definitions:
Mocha. “1. A rich, pungent Arabian coffee. 2.
Coffee of high quality. 3. A flavoring made of
coffee often mixed with chocolate.” The American
Heritage Dictionary

Mocha coffee. “a superior dark coffee made from
beans from Arabia.” www.thefreedictionary.com.6

6 These definitions are consistent with the definitions in
Webster’s Third New International Dictionary of the English
Language (Unabridged), p. 1450 (1993) (“Arabica coffee”) and in
The Random House Dictionary of the English Language (Unabridged),
p. 1235 (2nd ed. 1987) (“a choice variety of coffee”). As a
general rule, the Board may take judicial notice of dictionary
Ser No. 76678951
7
In addition, the record includes reprints of various
web pages from the Internet that describe mocha coffee
beans, their geographic origin, and their distinctive
flavor.7 Clearly, on the record at hand, there is no
question that “mocha” is descriptive, if not generic, for
coffee and coffee beans. Indeed, applicant has not
presented any argument to the contrary. Moreover, its
unsuccessful attempt to amend the application to seek
registration on the Supplemental Register may be taken as
an indication that applicant recognizes that its proposed
mark MOCCA is merely a misspelling or the phonetic
equivalent of the descriptive or generic term. However, as
applicant has not amended its application to claim use of
the mark in commerce, its proposed mark is ineligible for
registration on the Supplemental Register.
As for registration of the misspelling of a
descriptive or generic term on the Principal Register, the
case law is clear that, unless the misspelling creates some

evidence. University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).

7 The record also includes a copy of a third-party registration
for coffee that the Examining Attorney originally cited as a bar
to registration, but subsequently withdrew: Registration No.
2698134 for the mark ABYSSINIAN MOCCA. The registrant disclaimed
the exclusive right to use the word “Mocca.”
Ser No. 76678951
8
play on words or a unique presentation of the term, it is
no more registrable than the descriptive or generic term
itself. See In re Bayer Aktiengesellschaft, 488 F3d 960,
82 USPQ2d 1828 (Fed. Cir. 2007) (ASPIRINA descriptive for
analgesic known by generic term “aspirin”); In re Stanbel
Inc., 16 USPQ2d 1469 (TTAB 1990) (ICE PAK for reusable ice
substitute the equivalent of the generic “ice pack”);
Sebastian International Inc. v. Hask Toiletries Inc., 12
USPQ2d 2008 (TTAB 1989) (asserted mark SHPRITZ, registered
under Section 2(f) and therefore acknowledged not to be
distinctive, is phonetic equivalent of generic term
SPRITZ); In re Newport Fastener Company Inc., 5 USPQ2d 1064
(TTAB 1987) (TYLE TYE phonetic equivalent of “tile tie” and
descriptive; registration permitted on supplemental
register); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB
1987) (MINERAL-LYX a misspelling or phonetic equivalent of
the term “mineral licks” and descriptive); and In re
Engineering Systems Corporation, 2 USPQ2d 1075 (TTAB 1986)
(DESIGN GRAPHIX a mere misspelling of “design graphics,” a
highly descriptive term). Compare with In re Tea and
Sympathy Inc., 88 USPQ2d 1062 (TTAB 2008) (THE FARMACY not
merely descriptive because a play on “farm-fresh”
characteristics of products); and In re Grand Metropolitan
Foodservice Inc., 30 USPQ2d 1974 (TTAB 1994) (“MufFuns” not
Ser No. 76678951
9
descriptive; and third parties protected by disclaimer of
“muffins”).
There is nothing distinctive that results from
applicant’s substitution of a second letter “c” for the
letter “h” in “mocha.” The refusal of registration under
Section 2(e)(1) is affirmed and we therefore turn to the
refusal under Section 2(d).
Likelihood of Confusion
Our determination of the refusal under Section 2(d)
must be based on an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E.I. du Pont de
Nemours and 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). “The likelihood of
confusion analysis considers all DuPont factors for which
there is evidence of record but ‘may focus ... on
dispositive factors.’” Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir.
2002) (citations omitted). In many cases, two dispositive
considerations are the similarities of the marks and the
similarities of the goods and services. See, e.g.,
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
Ser No. 76678951
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mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”). Accordingly, we review the
evidence of record and the arguments concerning the import
of such evidence in light of such considerations.
As already noted, applicant’s goods are coffee beans.
The cited registered mark is registered for “coffee and
coffee derivatives.” While applicant has limited its
identification to coffee beans (and perhaps to whole
beans), the registration has no limiting language and the
word “coffee” must be construed to include at least both
ground coffee and coffee beans, and perhaps even brewed
coffee. Accordingly, the involved goods are, in part,
legally identical. Even if they were not, they are highly
related, as shown by the evidence made of record by the
examining attorney.
The examining attorney’s evidence establishing the
related nature of the goods includes numerous third party
registrations, each covering a mark registered based on use
in commerce, and each of which lists various coffee or
coffee-derived products. For example, Registration no.
3264833 for the mark LASATERS COFFEE & TEA and design,
includes the following identification: “Beverages made of
coffee; caffeine-free coffee; coffee; coffee beans; coffee-
Ser No. 76678951
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based beverage containing milk; ground coffee beans;
prepared coffee and coffee-based beverages; roasted coffee
beans.” Many of the other registrations cover both coffee
and coffee beans. These registrations are probative of the
related nature of the goods involved in the instant case.
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB
1988), aff’d in unpublished opinion 88-1444 (Fed. Cir.
11/14/1988). See also, In re Infinity Broadcasting
Corporation, 60 USPQ2d 1214, 1217-1218 (TTAB 2001). Also
of record is a web page from the Internet showing a
retailer that markets both whole bean and ground coffee.
In its initial appeal brief, applicant contends that
“the caveat ‘not including ground coffee-derived coffee,’ …
raised an issue of product differentiation that should have
been, but was not considered by the trademark attorney as
obviating the likelihood of confusion.” Applicant has not,
however, explained what that product differentiation is
and, as already noted, we do not find the exclusionary
language particularly clear. Regardless of the intended
effect of applicant’s “caveat,” we find the goods at least
closely related.
With respect to the channels of trade and classes of
consumers, applicant contends that “it has not been
established that the respective goods are marketed in a way
Ser No. 76678951
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… that would create the incorrect assumption that they
originate from the same source.” The law is clear,
however, that when neither of the involved identifications
contains limitations as to the classes of consumers or
channels of trade for the identified goods, then the goods
must be presumed to travel in all normal channels of trade
to all customary consumers for such goods. See Octocom
Systems, Inc. v. Houston Computers Services 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 trade or the class of purchasers to
which the sales of goods are directed.

Clearly, coffee and coffee beans, which may in fact be
the same product, would be likely to be marketed to the
same class of consumers and we must presume that they would
be marketed in the same channels of trade. There is
nothing in the identifications which would allow us to
reach a contrary conclusion.
We now 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. In re E. I. du Pont
Ser No. 76678951
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De Nemours & Co., supra. The marks are similar in terms of
sight, sound, meaning and commercial impression to the
extent that they both include a phonetic equivalent of the
word “Mocha” (i.e., MOCCA or MOCA). However, the marks are
different because the registered mark includes the drawing
of a stylized man. Thus, the issue before us is whether
the absence of the drawing in applicant’s mark is
sufficient to distinguish it from opposer’s mark. For the
reasons stated below, we find that the differences in the
marks outweigh the similarities.
This issue is similar to the issue we face when a
house mark is added to otherwise similar product marks.
There is no per se rule that if two product marks (e.g.,
MOCA and MOCCA) are confusingly similar, the addition of a
house mark (e.g., the drawing of the stylized man) would
not be sufficient to differentiate the marks. New England
Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817, 819
(CCPA 1975). In such cases, we must consider the entire
marks, including the presence of the house mark in light of
the evidence of record.
The Board has previously described the different
effects the addition (or subtraction) of a house mark can
have in the likelihood of confusion analysis:
Ser No. 76678951
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[S]uch addition may actually be an
aggravation of the likelihood of
confusion as opposed to an aid in
distinguishing the marks so as to avoid
source confusion. On the other hand,
where there are some recognizable
differences in the asserted conflicting
product marks or the product marks in
question are highly suggestive or
merely descriptive or play upon
commonly used or registered terms, the
addition of housemark and/or other
material to the assertedly conflicting
product mark has been determined
sufficient to render the marks as a
whole sufficiently distinguishable.

In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985)
(citations omitted) (applicant’s LE CACHET DE DIOR
confusingly similar to CACHET because applicant failed to
prove that the word “cachet” was highly suggestive,
descriptive or commonly used or registered). See also Nike
Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1201-1202
(TTAB 2007) (S and a star design for athletic bags and
clothing is likely to cause confusion with S STARTER and
star design for identical products). Compare with Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005); and In re S. D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB
1984) (“designers/fabric” and design for retail store
services in the field of fabrics, wall hangings, buttons
and accessories is not likely to cause confusion with DAN
RIVER DESIGNER FABRICS and design for textile fabrics).
Ser No. 76678951
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In Knight, the Board found that the word “essentials”
was highly suggestive when used in connection with
clothing. As evidence of the highly suggestive nature of
the word “essentials,” the Board relied on a dictionary
definition of “essentials” as connoting that “the clothing
items sold under the marks are basic and indispensable
components of, or ‘essentials’ of, one’s wardrobe,” as well
as 23 third-party registrations, owned by 21 different
entities, that include the word “essentials” as part of the
mark. Knight Textile Corp. v. Jones Investment Co., 75
USPQ2d at 1316.
In this case, we have already determined that the
words at issue, MOCCA and MOCA, are highly descriptive, if
not generic, when used in connection with coffee, coffee
derivatives and coffee beans. Based on this evidence, we
find that purchasers will be able to distinguish the marks
because the common elements are so highly descriptive that
consumers will perceive the terms MOCCA and MOCA as
ordinary descriptive speech, not as trademarks. Hence our
finding that MOCCA is descriptive or generic, coupled with
registrant’s disclaimer of the exclusive right to use
“Moca” is significant in this case. That a descriptive or
generic term is given little weight in the likelihood of
confusion analysis reflects marketplace reality because
Ser No. 76678951
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consumers give little source indicating significance to
descriptive terms. There is no reason to believe, and
there is no evidence on the point, that consumers are
likely to perceive the word MOCA in the registered mark as
anything other than a type, not a brand, of coffee. To
hold otherwise gives registrant the exclusive right to use
the word “Moca” when it is a privilege that it holds in
common with all others, including applicant.
In view of the foregoing, we find that the marks are
not similar in terms of their appearance, sound, meaning
and commercial impression.
Having considered the evidence of record as it
pertains to the relevant likelihood of confusion factors,
we find that confusion is unlikely to result from the
contemporaneous use of opposer’s MOCA and design mark and
applicant’s MOCCA mark, even though the marks are used on
closely related products that move in the same channels of
trade and are sold to the same classes of consumers. We
find that dissimilarity of the marks, simply outweighs the
evidence as to the other factors. See Kellogg Co. v.
Pack’Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889),
aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Decision: The refusal of registration under Section
2(d) is reversed.
Ser No. 76678951
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The refusal under Section 2(e)(1) of the Trademark Act
is affirmed and therefore registration to applicant is
refused.

Rogers, Administrative Trademark Judge, dissenting in part:

I concur in the majority’s determination that
applicant’s proposed mark is merely descriptive and
therefore not registrable on the Principal Register. In
contrast, I disagree with the majority’s conclusion that
the Section 2(d) refusal should be reversed.
“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992). In this case, the
goods are “virtually identical,” at least insofar as
applicant has not established that there is any discernible
difference between registrant’s coffee and applicant’s
coffee beans.8 Under such circumstances, the similarity
between MOCCA and MOCA is significant.
The cited registration includes a disclaimer of MOCA,
and includes a statement that none of the lining or

8 “Coffee” is a general term that can be used in conversation to
refer to brewed coffee, ground coffee, whole coffee beans, and
perhaps other variations on the term.

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stippling in the mark is intended to indicate use of color
in the mark.9 Notwithstanding the disclaimer of the MOCA
element in the registered mark, it is still a significant
element of the mark. See In re RSI Systems LLC, 88 USPQ2d
1445 (TTAB 2008). In RSI Systems, applicant sought
registration of the mark set forth below, but included a
voluntary disclaimer of RSI.

In finding a likelihood of confusion between
applicant’s mark and the previously registered mark RSI,
for goods related to those of the applicant, the Board
noted:
“the filing of a disclaimer with the Patent and
Trademark Office does not remove the disclaimed
matter from the purview of determination of
likelihood of confusion.” Shell Oil, 26 USPQ2d at
1689. See also In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“The technicality of a disclaimer in National's
application to register its mark has no legal
effect on the issue of likelihood of confusion”).
Applicant has not shown that the term RSI would
not be the dominant term in the mark. … Finally,
the addition of the sphere in applicant's mark
does not significantly change the pronunciation,
meaning, or commercial impression of the mark.

9 A web page (www.moca.roma.it) made of record by the examining
attorney shows the mark in color, and the face is presented in
flesh-tone, the lips and hat in bright colors. However, since
the registration does not include a claim as to any particular
colors, these can be changed at any time.
Ser No. 76678951
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RSI Systems, 88 USPQ2d at 1448.

Similarly, in the case at hand, the addition of the
stylized face in the registered mark does not change the
pronunciation, meaning or commercial impression of that
mark. See, too, In re 1st USA Realty Professionals Inc.,
84 USPQ2d 1581 (TTAB 2007), wherein the Board affirmed a
Section 2(d) refusal and discounted applicant’s contention
that a star design was a more dominant element than the
words in its mark, one of which was disclaimed. As the
Board noted, “consumers are more likely to refer to
applicant’s services as 1st USA rather than as the real
estate brokerage with the star design.” Id. at 1587.
Likewise, consumers are more likely to refer to
registrant’s goods as MOCA than as the coffee with the
smiling face design. While the majority concludes that
consumers are likely to perceive the MOCA element in
registrant’s mark as indicating a type, rather than a
brand, of coffee, evidence of record suggests the contrary.
A reprint of an Internet web page featuring registrant’s
products was made of record by the examining attorney. The
address for the page is www.moca.roma.it, i.e., it features
the word MOCA. The registered mark appears on the page,
but so does a repeating image of the stylized word MOCA in
Ser No. 76678951
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an oval. And the page shows three packages of coffee, one
of which bears the registered mark and the other two of
which show only the stylized MOCA in an oval. This
evidence shows that consumers are more likely to refer to
registrant’s products as the MOCA brand of coffee
products.10
While I recognize that registrant has disclaimed MOCA,
the term is not removed from the registered mark and must
be considered in the comparison of the registered mark with
applicant’s mark. Further, as explained in the RSI Systems
decision, the mere existence of the disclaimer does not
mean that the term MOCA cannot be the dominant, or at least
a significant, element in the composite mark.
As for the comparison of the terms MOCA and MOCCA,
there is no sound basis for applicant’s contentions that
the additional letter in applicant’s mark results in a term
with a likely difference in pronunciation and creates a
significant visual difference. Applicant contends the
examining attorney’s conclusion that the terms would be

10 By making this observation I do not suggest that the owner of
the registered mark necessarily has rights in MOCA alone, but I
do conclude that consumers are not likely to perceive of the term
MOCA on registrant’s products as indicating only a type of
coffee. In fact, each of the three packages of coffee shown as
MOCA coffee on the web page are differentiated by the terms
Roburbar, Barcrema and Bar Classic, which appear to designate
different types of MOCA brand coffee.

Ser No. 76678951
21
pronounced the same is speculative. It is true that there
is no way to predict how consumers will articulate a term,
but applicant’s contention that they will be pronounced
differently is no less speculative than the contrary
conclusion of the examining attorney. While applicant has
put into the record a dictionary “pronunciation key” that
shows how the letter “a” can have different pronunciations,
this does not demonstrate why a double “c” would be
pronounced differently than a single “c.” “To cut to the
quick, even when ‘properly’ pronounced, the two marks are,
at a minimum, similar in sound.” See E.I. du Pont de
Nemours and Co. v. Sunlyra International Inc., 35 USPQ2d
1787, 1789 (TTAB 1995). And the visual difference
attributable to the additional letter “c” is likely to be
overlooked by many consumers. Id. (“…the two marks are as
similar as possible without being identical.”).
As for the connotations of MOCA and MOCCA, applicant
contends in its reply brief that the absence of MOCA from
the dictionary “belies the Trademark Attorney’s contention
that the marks in issue have the same connotation.” I
disagree, and conclude that both terms would likely be
viewed by consumers as misspellings of the term “mocha.”
Here, the Board is presented with substantially similar
marks used for legally identical or at least closely related
Ser No. 76678951
22
goods. As was the case in RSI Systems, the marks in this
case have the same pronunciation, meaning and commercial
impression. Under these circumstances, the mere weakness of
applicant’s mark and of the disclaimed portion of the
registered mark does not dictate that the registered mark is
entitled to so limited a scope of protection that a
virtually identical mark for legally identical or closely
related goods can be registered. “[E]ven weak marks are
entitled to protection against registration of similar
marks” for identical goods. In re Colonial Stores, 216
USPQ 793, 795 (TTAB 1982). See also In re The Clorox Co.,
578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a
laundry soil and stain remover held confusingly similar to
STAIN ERASER, registered on the Supplemental Register, for
a stain remover).
Finally, if there were any doubt on the question of
likelihood of confusion, the law favors registrant. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973)
("If there be doubt on the issue of likelihood of
confusion, the familiar rule in trademark cases, which this
court has consistently applied since its creation in 1929,
is that it must be resolved against the newcomer or in
favor of the prior user or registrant. The rule is usually
applied in inter partes cases but it applies equally to ex
Ser No. 76678951
23
parte rejections"). See also, In re Hyper Shoppes, 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) citing In re
Pneumatiques, and In re Digital Research Inc., 4 USPQ2d
1242 (TTAB 1987), citing In re Pneumatiques (Board affirmed
refusal to register applicant’s marks because they were
descriptive and because of likelihood of confusion with
registered mark, noting it was a close case but doubt was
to be resolved in favor of registrant).
Accordingly, I would affirm the refusal of
registration under Section 2(d).