Cubacaney Enterprises

Trademark Trial and Appeal Board

Feb 16, 2001

No. 75547960 (T.T.A.B. Feb. 16, 2001)

2/16/01 Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cubacaney Enterprises
________
Serial No. 75/547,960
_______
Christopher J. McDonald and Stewart L. Gitler of Hoffman, Wasson
& Gitler, PC for Cubacaney Enterprises.
David C. Reihner, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Cubacaney Enterprises has filed an application to
register the mark "CUBACANEY" for "cigars."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
1 Ser. No. 75/547,960, filed on September 4, 1998, which alleges dates
of first use of May 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/547,960
2
mark "CANEY," which is registered for "cigars,"2 as to be likely
to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks."3 Here, inasmuch as
applicant's goods are identical to registrant's goods, the focus
of our inquiry is on the similarities and dissimilarities in the
respective marks when considered in their entireties. Moreover,
as pointed out in Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992),
cert. denied, 506 U.S. 1034 (1994), "[w]hen marks would appear on
virtually identical goods ... , the degree of similarity [of the
marks] necessary to support a conclusion of likely confusion
declines."
2 Reg. No. 1,237,591, issued on May 10, 1983, which sets forth a date
of first use anywhere of January 1950 and a date of first use in
commerce of January 16, 1968; affidavit §8 accepted.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/547,960
3
Turning, therefore, to consideration of the respective
marks, applicant argues that, when considered in their
entireties, the marks are dissimilar in appearance, sound and
commercial impression. Applicant also maintains that the
respective marks are distinguishable in connotation inasmuch as
the registered mark "CANEY" is "the name of a town in Cuba, or
Spanish for the term VALLEY,"4 while applicant's "CUBACANEY" mark
"is a single term having no geographical significance" or other
meaning. As to the latter, applicant contends in particular
that:
The term CUBACANEY is the combination of
two words, CANEY and CUBA, written as one
word and in reverse order of what would
normally be expected. By reversing the order
and writing it as a unitary term, the mark is
an arbitrary term and loses any geographical
significance.
The Examining Attorney, while acknowledging that
applicant is correct that the marks at issue must be compared in
their entireties, nevertheless properly points out that our
principal reviewing court has indicated that, in articulating
reasons for reaching a conclusion on the issue of likelihood of
confusion, "there is nothing improper in stating that, for
4 Among other things, the excerpt of record from The Columbia Gazetteer
of the World (1998) lists "Caney" as a "town, Santiago de Cuba prov.,
E Cuba," which "[h]as iron mines and [a] textile factory" and was the
"[s]ite of fort stormed (1898) by Amer. forces during Span.-Amer.
War." However, contrary to applicant's assertion, we judicially
notice that as set forth in Cassell's English-Spanish Spanish-English
Dictionary (1978), "valle" is listed at 1082 as the Spanish word for
"valley," while "caney" is defined at 132 as a Spanish term meaning
"(Cub.) bend (of river); (Cub., Ven.) log cabin." It is settled that
the Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Ser. No. 75/547,960
4
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.3d 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. Here, because of the strong geographical
significance of the word "CUBA," especially in relation to
cigars, the Examining Attorney insists that the dominant and
distinguishing portion of applicant's mark is the term "CANEY,"
which is identical to registrant's mark.
Specifically, the Examining Attorney urges in this
regard that:
It is now well known that Cuba is famous for
cigars. No proof of this commonly known fact
should be necessary. The growing, picking,
and storage of the tobacco and the rolling
and aging of the cigars produced
differentiate Cuban cigars from all others.
Even though applicant's goods are not grown
or produced in Cuba, the use of the word Cuba
in relation to cigars is ... suggestive of
their style. Purchasers would think that
applicant's goods have some relation to Cuba
in that the cigars are produced from Cuban
seed tobacco or are rolled or aged using the
same techniques utilized by Cuban cigar
producers or that the same craftsmanship
learned by Cuban émigrés, while they were in
Cuba, is now used in producing applicant's
goods.
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/547,960
5
In the case of In re Collegian
Sportswear Inc., 224 USPQ 174 (TTAB, 1984), a
likelihood of confusion was determined to be
present between the marks "Collegian of
California" and design and "Collegienne" and
design[,] both for clothing[,] because the
word "California signaled to purchasers that
the goods so branded formed a new line of
"Collegienne" clothing featuring a
"California" or west coast style. Similarly,
in the case of Henri Siegel Co. v. M & R
International Mfg. Co., 4 USPQ2d 1154 (TTAB,
1087), a likelihood of confusion was
determined to be present between the mark
"Chic" and the mark "L.A. Chic" even though
the geographical location "L.A." was added to
the word "Chic" as a prefix. The Board
indicated that the mark 'L.A. Chic' is simply
a variation of petitioner's mark 'Chic' used
to designate a particular line of clothing
made by petitioner in Los Angeles,
California, or being of the style prevalent
there." Henri Siegel, supra, 1161. ....
Here, the same holds true. Because the
word "Cuba", used to form the mark
"Cubacaney", is ... suggestive of the style
of applicant's goods, it is weak and has been
given less weight when the likelihood of
confusion was considered vis-à-vis the mark
"Caney". ....
In reply, applicant does not take issue with the
Examining Attorney's assertions regarding the renown of Cuba for
cigars. Instead, applicant contends that the cases relied upon
by the Examining Attorney are "easily distinguishable from the
instant case." Among other things, applicant asserts that in
this case, "the word 'CUBA' is neither descriptive of the origin,
or suggestive of the style[,] of the good[s] to which the mark is
applied." Specifically, applicant maintains that this case "is
distinguishable in that it involves two single word marks and the
term 'CUBA', as a first component of a single word, loses any
geographical connotation to the average consumer." Applicant
Ser. No. 75/547,960
6
therefore concludes that "[t]he instant mark, CUBACANEY, is an
arbitrary term and, taken as a whole, creates a commercial
impression so differing from the mark CANEY" that there is no
likelihood of confusion.
We agree with the Examining Attorney, however, that
confusion is likely from the contemporaneous use of the marks
"CUBACANEY" and "CANEY" in connection with cigars. Contrary to
applicant's contentions, we believe that the average cigar
purchaser in the United States would not be aware of any
geographical or other significance for the term "Caney," but
would certainly be cognizant of, and would appreciate the
significance of, the geographical term "Cuba," especially as such
term relates to cigars. Consequently, the ordinary consumer of
cigars in this country would regard registrant's "CANEY" mark as
an arbitrary designation and would likewise view the "CANEY"
portion of applicant's "CUBACANEY" mark, when considered in its
entirety, as an arbitrary element, particularly since the
presence of the term "CUBA" in applicant's mark has such a strong
geographic connotation in connection with cigars. The fact that
the word "CUBA" in applicant's "CUBACANEY" mark is telescoped
into a single term, rather than being set forth as a separate
word, simply does not alter the descriptive significance of such
word or lessen its recognition, given the notoriety of Cuba for
cigars. Consequently, it is the arbitrary term "CANEY," which
obviously is identical to registrant's mark, which functions as
the principal source-indicative portion of applicant's
"CUBACANEY" mark.
Ser. No. 75/547,960
7
In view thereof, it is readily apparent that the term
"CANEY" in applicant's "CUBACANEY" mark constitutes a prominent
and significant element thereof, resulting in a mark which, when
considered in its entirety, is substantially similar in sound,
appearance and overall commercial impression to registrant's
"CANEY" mark. Confusion as to origin or affiliation is likely to
occur from the contemporaneous use of the respective marks in
connection with identical goods, namely, cigars. Even assuming,
moreover, that purchasers acquainted with registrant's "CANEY"
mark would notice the "CUBA" feature of applicant's "CUBACANEY"
mark, they still would be likely to believe, for example, that
registrant has expanded its goods to include a new line of cigars
evocative of those made in Cuba.
Decision: The refusal under Section 2(d) is affirmed.