Brasserie De Tahiti S.A.v.Tahiti Springs

Trademark Trial and Appeal Board

Apr 24, 2009

No. 92047738 (T.T.A.B. Apr. 24, 2009)

Mailed:
April 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Brasserie De Tahiti S.A.
v.
Tahiti Springs
_____

Cancellation No. 92047738
_____

Surjit P. Soni and Ronald E. Perez of The Soni Law Firm for
Brasserie De Tahiti S.A.

Felix A. Gonzalez for Tahiti Springs.
_____

Before Grendel, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Introduction

Tahiti Springs (respondent) is the owner of
Supplemental Register Registration No. 3231922, which is of
the mark TAHITI SPRINGS (in standard character form) for
goods identified in the registration as “bottled spring
water.”1

1 The registration was issued on April 17, 2007, from an
application filed on February 27, 2006. The registration includes
respondent’s disclaimer of SPRINGS.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92047738
2
Brasserie De Tahiti S.A. (petitioner) has petitioned to
cancel respondent’s registration on the ground that the
registered mark, as applied to the goods identified in the
registration, so resembles petitioner’s mark O’TAHITI,
previously used and registered on the Principal Register for
“bottled drinking water,”2 as to be likely to cause
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).3
Respondent filed an answer to the petition to cancel,
by which it denied petitioner’s allegations pertaining to
the Section 2(d) claim and asserted various affirmative
defenses. Respondent also counterclaimed for cancellation
of petitioner’s pleaded registration on the ground of fraud.
Petitioner answered the counterclaim by denying the
salient allegations thereof and asserting various
affirmative defenses.
Neither party submitted evidence during its assigned
testimony period. Petitioner filed a trial brief;
respondent did not.4

2 Registration No. 3206518, issued on February 6, 2006 from an
application filed on July 26, 2004.

3 In its trial brief, petitioner argues that respondent’s
registration also should be cancelled on the grounds of fraud,
mere descriptiveness, and geographic descriptiveness. These
grounds were not pleaded, and we have given them no
consideration. They have not been proven, in any event.

4 Petitioner also filed a reply brief, despite the fact that
respondent had not filed a brief to which petitioner could reply.
We have not considered the reply brief.
Cancellation No. 92047738
3
For the reasons discussed below, we deny respondent’s
counterclaim for cancellation of petitioner’s pleaded
registration. We grant petitioner’s petition to cancel
respondent’s registration.
Evidentiary Matters
As noted above, neither party submitted evidence at
trial. However, with petitioner’s trial brief, petitioner
filed a request that we take judicial notice of (1) a copy
of petitioner’s pleaded registration (which is the
registration involved in respondent’s counterclaim); (2) a
copy of respondent’s registration; (3) a copy of
petitioner’s petition to cancel; (4) a copy of respondent’s
answer and counterclaim; (5) respondent’s responses to
petitioner’s Requests for Admissions; (6) respondent’s
responses to petitioner’s Requests for Production of
Documents; and (7) respondent’s responses to petitioner’s
Interrogatories.
Petitioner’s petition to cancel and respondent’s
answer/counterclaim are pleadings which are already of
record in this case. We therefore deny as moot petitioner’s
request for judicial notice of those documents.
Respondent’s ‘922 registration which is the subject of
petitioner’s petition to cancel is already of record by
operation of rule. See Trademark Rule 2.122(b)(1), 37
Cancellation No. 92047738
4
C.F.R. §2.122(b)(1). We therefore deny as moot petitioner’s
request for judicial notice of respondent’s registration.
Likewise, petitioner’s ‘518 pleaded registration,
because it is the subject of respondent’s counterclaim for
cancellation, is already of record by operation of rule.
See id. We therefore deny as moot petitioner’s request for
judicial notice of petitioner’s pleaded registration.
We deny petitioner’s request that we take judicial
notice of respondent’s responses to petitioner’s discovery
requests. Discovery responses are not a proper subject for
judicial notice under Fed. R. Evid. 201(b).5 They must be
properly made of record under notice of reliance or
otherwise in compliance with Trademark Rule 2.120(j)(3)(i),
37 C.F.R. §2.120(j)(3)(i). See The Clorox Company v. The
State Chemical Mfg. Co., 197 USPQ 840 (TTAB 1977).
Thus, the evidence of record in this case consists of
(1) the pleadings,6 (2) petitioner’s pleaded ‘518
registration, upon which petitioner relies for its petition

5 “A judicially noticed fact must be one not subject to
reasonable dispute in that it is either (1) generally known
within the territorial jurisdiction of the trial court or (2)
capable of accurate and ready determination by resort to sources
whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
201(b).

6 However, it is settled that “…statements made in pleadings
cannot be considered as evidence in behalf of the party making
them ... Pleadings have evidentiary value only to the extent that
they contain admissions against interest made by an opponent.”
Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1548 n.
6 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Cancellation No. 92047738
5
to cancel and which also is the subject of respondent’s
counterclaim for cancellation, and (3) respondent’s ‘922
registration which is the subject of the petition to cancel.
Respondent’s Counterclaim is Denied
We find that respondent has standing to petition to
cancel petitioner’s pleaded ‘518 registration, by virtue of
its position as defendant in the underlying cancellation
proceeding. See, e.g., Ohio State University v. Ohio
University, 51 USPQ2d 1289 (TTAB 1999).
However, we find that respondent has failed to prove
its pleaded fraud counterclaim. Respondent submitted no
evidence in support of the fraud counterclaim at trial, and
petitioner’s answers to the fraud allegations of
respondent’s counterclaim do not include admissions
sufficient to establish the alleged fraud.
Accordingly, we deny respondent’s counterclaim for
cancellation of petitioner’s pleaded registration.
Petitioner’s Petition to Cancel is Granted
Because petitioner’s pleaded registration is of record
and because its likelihood of confusion claim is not
frivolous, we find that petitioner has standing to petition
to cancel respondent’s ‘922 registration. See Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982); see also Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Cancellation No. 92047738
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Because petitioner’s pleaded Principal Register
registration is of record, petitioner is entitled to rely
for Section 2(d) priority purposes on its constructive first
use date of July 26, 2004, the filing date of the
application which matured into its pleaded registration.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). This
date is prior to any date upon which respondent might rely
for priority purposes in this case. Accordingly, we find
that petitioner has established its Section 2(d) priority.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Beginning with the second du Pont factor (comparison of
the goods), we find that the goods identified in
respondent’s registration, “bottled spring water,” are
encompassed within and thus legally identical to the goods
identified in petitioner’s registration, “bottled drinking
Cancellation No. 92047738
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water.” The second du Pont factor weighs in favor of a
finding of likelihood of confusion.
Under the third du Pont factor (comparison of trade
channels), we note that there are no restrictions or
limitations as to trade channels or classes of purchasers in
either party’s identification of goods. In view thereof,
and because the parties’ goods are legally identical, we
find that the trade channels and purchasers of the parties’
respective goods likewise are legally identical. In re
Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); In re Elbaum,
211 USPQ 639 (TTAB 1981). The third du Pont factor weighs
in favor of a finding of likelihood of confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that the parties’ respective bottled
water products are inexpensive, ordinary consumer goods
which are or would be purchased by ordinary consumers
exercising only a normal degree of care. The fourth du Pont
factor weighs in favor of a finding of likelihood of
confusion.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first du
Pont factor, is not whether the marks can be distinguished
Cancellation No. 92047738
8
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. 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).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-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.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, in cases
such as this, where the parties’ goods are legally
identical, the degree of similarity between the marks which
is required to support a finding of likelihood of confusion
is less than it would be if the goods were not identical.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applying these principles in this case, we find as
follows.
Cancellation No. 92047738
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To review, petitioner’s registered mark is O’TAHITI.
Respondent’s registered mark is TAHITI SPRINGS.
We find that the dominant feature of respondent’s
TAHITI SPRINGS mark is the word TAHITI. Although
respondent’s mark is registered on the Supplemental Register
(presumably due to the geographic significance of TAHITI),
the word TAHITI is still dominant given the genericness of
the word SPRINGS (which respondent has disclaimed on the
Supplemental Register), as applied to “bottled spring
water.” We take judicial notice that “springs” is defined
as “an issue of water from the earth, taking the form, on
the surface, of a small stream or standing as a pool or
small lake.” The Random House Dictionary of the English
Language (Unabridged) p. 1846 (2nd ed. 1987). Although we
do not disregard SPRINGS, we find for these reasons that it
is entitled to less weight than TAHITI in our comparison of
the parties’ marks.
In terms of appearance and sound, we find that the
parties’ marks are similar in that they both include the
word TAHITI. The marks look and sound different to the
extent that the TAHITI in petitioner’s mark includes the
prefix “O’” and to the extent that the word SPRINGS appears
in respondent’s mark. However, we find that these points of
dissimilarity between the marks are outweighed by the
similarity between the marks which arises from the presence
Cancellation No. 92047738
10
of TAHITI in both marks. On balance, we find that the marks
are similar in terms of appearance and sound.
We also find that the two marks are similar in terms of
connotation and commercial impression because, as applied to
bottled water, they both suggest to purchasers that the
water comes from or has some other connection to Tahiti or
the South Pacific.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression, we
find that they are similar. We find that the first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Balancing the pertinent du Pont factors in this case,
we find that a likelihood of confusion exists. Given that
the parties’ goods, trade channels and purchasers are
legally identical, and that the goods are ordinary,
inexpensive consumer items purchased by ordinary consumers
without necessarily a great deal of care, we find that the
marks are sufficiently similar that confusion is likely to
result from the parties’ contemporaneous use of the marks on
the goods.
Conclusion and Decision
For the reasons discussed above, we find that
petitioner has standing and that a valid ground (Section
2(d)) for cancellation of respondent’s registration exists.
Cancellation No. 92047738
11
We further find that respondent has failed to prove its
fraud counterclaim.

Decision: The petition to cancel respondent’s
Registration No. 3231922 is granted. The counterclaim for
cancellation of petitioner’s Registration No. 3026518 is
denied.