EP Family, Corp.

Trademark Trial and Appeal Board

Sep 4, 2019

87561116 (T.T.A.B. Sep. 4, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re EP Family, Corp.
_____

Serial Nos. 87561113 and 87561116
_____

Songfong Tommy Wang of Wang IP Law Group PC,
for EP Family, Corp.
Andrew Crowder-Schaefer, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
_____

Before Wellington, Greenbaum, and Dunn,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
EP Family, Corp. (“Applicant”) seeks registration on the Principal Register of the
standard character mark CHA4TEA and the stylized mark for
“Instant tea; Tea” in International Class 30.1

1 Applications Serial Nos. 87561113 and 87561116 were filed on August 8, 2017, based upon
Applicant’s claim of first use of the marks anywhere at least as early as May 1, 2016, and use
in commerce since at least as early as May 2015. There is no claim of a color feature in the
stylized mark.
Serial Nos. 87561113 and 87561116
- 2 -

The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
CHA FOR TEA and design, displayed as:
for:

Food preparation services; preparation of food and
beverages; provision of food and drink in restaurants;
restaurant services, including sit-down service of food and
take-out restaurant services; restaurant services, namely,
providing of food and beverages for consumption on and off
the premises; serving of food and drink/beverages, in
International Class 43.2
The wording CHA and FOR TEA are disclaimed and the registered mark is
described, in part, as “a rectangle with bamboo borders that is divided into two parts.
In the upper portion is a leaf.”
After the refusals were made final, Applicant appealed to this Board. The appeals
are fully briefed. For the reasons given herein, we affirm the refusals to register both
marks in this decision.3

2 Registration No. 5226478 issued on June 20, 2017. Color is not claimed as a feature of the
mark.
3 Although the cases have not been consolidated, we issue a single decision because the issues
are nearly the same and the records in the appeal proceedings are essentially the same. In re
Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1043 (TTAB 2013) (two appeals involving
common issues of law and fact decided in a single opinion). All citations to the record
(TTABVUE and TSDR) in this decision pertain to the record created in connection with Ser.
No. 87561113.
Serial Nos. 87561113 and 87561116
- 3 -

I. Applicable Law
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 Co., 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 marks and the relatedness of the
goods and services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-
46 (Fed. Cir. 2004); 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 [or
services]and differences in the marks.”). We discuss below these and other relevant
factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered); In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont
factors for which there is record evidence but ‘may focus … on dispositive factors,
such as similarity of the marks and relatedness of the goods [or services].’”) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)).
A. The similarity or dissimilarity of the marks
Under this factor, we compare Applicant’s CHA4TEA marks (in standard
characters and stylized as shown above) with the cited registered mark CHA FOR
Serial Nos. 87561113 and 87561116
- 4 -

TEA (stylized with design) “in their entireties as to appearance, sound, connotation
and commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005). The test is not whether the marks can be distinguished in a
side-by-side comparison, but instead whether their overall commercial impressions
are so similar that confusion as to the source of the goods and services offered under
the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Further,
marks “‘must be considered … in light of the fallibility of memory ….’” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando
Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA
1977)). The proper focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See St. Helena
Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971).
Although there is no “correct” pronunciation of a mark, Viterra, 101 USPQ2d at
1912, we find that consumers are most likely to view each mark and verbalize it in
roughly the same manner. That is, Applicant’s CHA4TEA marks are phonetically
equivalent to the wording in the cited mark, CHA FOR TEA. Indeed, except for
Applicant’s insertion of the number “4” in place of the word “for” and deletion of spaces
between the terms, the wording in the marks is virtually the same. The substitution
Serial Nos. 87561113 and 87561116
- 5 -

of numbers or special characters for words or letters has typically been found to be
inconsequential to the sound and meaning. See, e.g., In Home Fed. Savings and Loan
Ass’n, 213 USPQ 68, 69 (TTAB 1982) (TRAN$ FUND deemed similar to
TRANSFUND). It is common knowledge that consumers frequently encounter this
practice for a variety of purposes, e.g., on license plates, signage, texting, or graffiti.
The numeral “4” is the perhaps the most frequently-used numeral – as an
abbreviation in place of the word “for,” as in “4 sale.” The Examining Attorney
submitted printouts from the website “Acronym Finder” corroborating that “4” is a
well-known abbreviation for the word “for.”4
Additionally, the lack of spaces between the terms “CHA” “4” “TEA” in Applicant's
mark makes little difference. Consumers will have no trouble recognizing Applicant’s
mark as consisting of the same (or equivalent wording) found in Registrant’s mark
and the terms will have the same connotation. See In re Iolo Technologies, LLC, 95
USPQ2d 1498, 1499 (TTAB 2010) (The two words [ACTIVE CARE] retain the same
meanings when joined as a compound [ACTIVECARE].”); In re Carlson, 91 USPQ2d
1198, 1200 (TTAB 2009) (URBANHOUZING found to have same meaning as URBAN
HOUSING); In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998) (whether
unitary or two separate words, the commercial impression is the same).

4 Office Action issued May 31, 2018, TSDR p. 2.
Serial Nos. 87561113 and 87561116
- 6 -

We have given consideration to the differences between the marks. Applicant
argues that there are “substantial visual differences” between the marks that “allow
consumers to easily distinguish” them and “avoid any potential confusion.”5
In comparing the marks, we recognize that we must consider Applicant’s and
Registrant’s marks in their entireties, not merely the literal portions. In this regard,
we have taken into account all of the differences, including the leaf design and
bamboo elements present in the registered mark. The leaf design is indeed relatively
prominent in the mark. Nevertheless, we must further keep in mind that with any
composite word and design marks, like Registrant’s, the wording will generally play
a more vital role because this is what consumers will use to call for the goods or
services and helps clearly and readily identify any source of goods or services. See
e.g. In re Viterra Inc., 101 USPQ2d at 1911 (“the verbal portion of a word and design
mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a
word and a design, then the word is normally accorded greater weight because it
would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for creating
its overall commercial impression, the marks are confusingly similar”). With respect
to Registrant’s mark, consumers who have been exposed to it are likely to recall it by
using the wording “Cha for Tea,” rather than trying to verbalize a leaf design.

5 4 TTABVUE 8-9.
Serial Nos. 87561113 and 87561116
- 7 -

We have also considered Applicant’s argument that CHA is “conceptually weak”
because it is a “commonly used term in association with tea” and “consumers must
look to other words, stylization, and design elements to form a commercial impression
as to each mark.”6 In support, Applicant points to a single, third-party registration
that the Examining Attorney submitted for the mark CHA TEA. FOOD. BOBA.
(stylized with a design) for tea and restaurant services.7 All wording in the mark has
been disclaimed. Applicant also points to the fact that, and as previously noted, the
terms CHA and FOR TEA have been disclaimed in the cited registration. The
Examining Attorney does not dispute the conceptual weakness or descriptiveness of
the wording in the marks, but argues that “the disclaimed matter in the registered
mark ‘CHA’ and ‘FOR TEA,’ can be reviewed … for similarity with the applied-for
mark[s].”8 The Examining Attorney cites to Schwarzkopf v. John H. Breck, Inc., 340
F.2d 978, 144 USPQ 433 (CCPA 1965), asserting that disclaimers do not remove the
disclaimed matter from the mark.
We have no trouble finding that the shared terms CHA and TEA are conceptually
weak in connection with both Applicant’s tea goods and Registrant’s restaurant and
provision of beverages services which, as discussed below, must be presumed to

6 7 TTABVUE 8-9. CHA is defined as “slang [for] tea.” Definition obtained from
www.thefreedictionary.com, with cited reference to Collins English Dictionary – Complete
and Unabridged, 12th Edition 2014 HarperCollins Publishers. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
7 Attached to Office Action issued on November 13, 2017, TSDR pp. 17-19.
8 6 TTABVUE 7.
Serial Nos. 87561113 and 87561116
- 8 -

include the provision of tea. Nonetheless, all elements of the marks are given
consideration in evaluating the similarity of the overall marks, and this includes any
conceptually weak or disclaimed matter. See Specialty Brands, Inc. v. Coffee Bean
Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984) (SPICE
ISLANDS and SPICE VALLEY found confusingly similar for tea despite Applicant’s
disclaimer of the word SPICE). See also In re Nat’l Data Corp., 753 F.2d 1056, 1059,
224 USPQ 749, 751 (Fed. Cir. 1985); Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); In re MCI Commc’ns Corp.,
21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).
In this case, we find it particularly pertinent that not only does Applicant seek to
use the same (or equivalent) terms, albeit comprised of descriptive or highly
suggestive wording, but also in the same order as the wording in the registered mark.
Applicant’s reliance on a single third-party registration for a mark that has “CHA
TEA” does not demonstrate that these terms are commonly used together, let alone
that any others use the phrase “Cha for tea.”9
Ultimately, in comparing the marks in their entireties, we find Applicant’s marks
and the registered mark are overall more similar than not. Despite some differences

9 In its brief (4 TTABVUE 15), Applicant relies on a list of third-party registrations for marks
comprising or with the suffix –VEX to show that those marks, albeit dissimilar from the
involved marks, are able to coexist. Applicant similarly referenced a list of third-party
registrations in its May 9, 2018 Response (at TSDR p. 5). The Examining Attorney’s timely
objections (6 TTABVUE 14-15; and Office Action issued May 31, 2018, TSDR p. 1) to the lists
are sustained on the ground that the mere submission of a list of registrations does not make
the third-party registrations of record and thus cannot be relied upon. TBMP §1208.02.
Regardless of their admissibility, the lists have almost no probative value as to the weakness
of the involved marks because they involve registrations for marks that completely dissimilar
to the ones at issue.
Serial Nos. 87561113 and 87561116
- 9 -

and bearing in mind that wording is conceptually weak, the marks engender very
nearly the same commercial impressions. Accordingly, this du Pont factor supports a
finding of a likelihood of confusion.
B. Relatedness of the Goods and Services – “Something More” – and Trade
Channels
The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.’” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du
Pont, 177 USPQ at 567); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). “[L]ikelihood of confusion can
be found ‘if the respective products are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Here, we look to determine the relationship, if any, between Applicant’s “instant
tea; tea” goods with Registrant’s restaurant services as well as its services described
as the “preparation [and] provision of beverages.” In cases such as this, where
restaurant services are being compared to actual food or drink items, we have pointed
out that there is no per se rule that they are related. Lloyd’s Food Prods., Inc. v. Eli’s,
Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se confusion, where
similar marks are used in connection with restaurant services and food products).
Rather, when it comes to restaurant services and beverages, we often state that
Serial Nos. 87561113 and 87561116
- 10 -

“something more” is required (over and above a showing that the goods and services
are offered together) because the relatedness of the parties’ respective goods and
services may not be evident. In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB
2001).
In order to meet this “something more” standard and show that Applicant’s tea
goods have a relationship to Registrant’s restaurant and “preparation and provision
of beverages” services, the Examining Attorney submitted a number of printouts from
third-party commercial websites demonstrating that a single entity is likely to
provide or feature tea and tea-based beverages, as well as restaurant services or the
preparation and provision of beverages with an emphasis on tea, all under the same
mark. For example, LEAFOLOGY is a tea lounge offering “high quality loose leaf
teas” for sale as well as a menu of food items including paninis, potstickers, and
grilled cheese sandwiches.10 ARGO TEA is another establishment that advertises
both tea:11

and offers a “Café Menu” of food items sold at its locations:

10 May 31, 2018 Office Action, TSDR 3-8.
11 Id., 9-10.
Serial Nos. 87561113 and 87561116
- 11 -

Other examples of restaurants or entities that offer “preparation and provision of
beverages” services, and sell tea under the same mark include: the TIM HORTON’S
chain of restaurants,12 HARNEY & SONS,13 SAMOVAR tea lounge,14 TEAVANA,15
three TEAISM restaurants,16 and THE COFFEE BEAN & TEA LEAF store.17
The Examining Attorney also made of record approximately twenty-four use-
based, third-party registrations from the USPTO’s electronic database to show that
it is common for a single entity to register the same mark for tea and tea accessories
or tea ware that are the same as, or very similar to, those at issue.18 A few examples

12 Id., 13-14.
13 Id., 15-16.
14 Id., 11-12.
15 November 13, 2017 Office Action, TSDR 5-6.
16 Id., 7-8.
17 Id., 9-10.
18 Copies of registrations attached to November 13, 2017 Office Action, TSDR 11-26; and May
31, 2018 Office Action, TSDR 17-77.
Serial Nos. 87561113 and 87561116
- 12 -

include:19 Reg. No. 5188301 for APANAS identifies tea goods and restaurant services;
Reg. No. 5397274 for KAAB TEA GOURMET identifies tea goods and restaurant
services; and Reg. No. 5282246 for LEAFOLOGY TEA LOUNGE tea goods and
restaurant services.
While third-party registrations are not evidence that the marks shown therein are
in commercial use, or that the public is familiar with them, such registrations that
individually cover a number of different items and are based on use in commerce may
have some probative value to the extent that they serve to suggest that the listed
services and goods are of a type which may emanate from a single source. See In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); see also In re Anderson, 101 USPQ2d
1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993). In other words, the third-party registrations help show “tea” and
“restaurant” services may emanate from the same source under the same mark.
As to the third du Pont factor, involving the established, likely-to-continue
channels of trade for the goods and services, the identifications in the applications
and the cited registration have no restrictions on channels of trade.20 Thus we must
presume that Applicant’s tea and Registrant’s restaurant and “preparation and
provision of beverages” services will travel in all channels of trade appropriate for

19 A longer list of examples of the third-party registrations was included in the Examining
Attorney’s brief (6 TTABVUE 10-11).
20 Applicant argues that its goods “are sold in a retail setting online, whereas Registrant’s
services are offered at a brick and mortar establishment.” 4 TTABVUE 11-12. However,
there is no such restriction reflected in the applications.
Serial Nos. 87561113 and 87561116
- 13 -

such goods and services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). The aforementioned third-party use
evidence demonstrates that tea goods may be sold loose or as a packaged product from
entities that render services like that described in the cited registration. Accordingly,
we must assume that Applicant’s goods would be served in restaurants or places that
prepare and provide beverages, like Registrant. Additionally, we cannot assume any
higher level of purchasing care inasmuch as Applicant’s tea and Registrant’s services
would be offered to all usual consumers for the goods and services, including the
general public.
For the aforementioned reasons, we find that the evidence meets the “something
more” burden because it shows that tea goods, on the one hand, and restaurant and
“preparation and provision of beverages” services, on the other hand, are the types of
goods and services that may emanate from a common source. Moreover, there is some
commonality in the channels of trade as the evidence shows that consumers
interested in buying tea products, not just a prepared tea beverage, may purchase
the goods in restaurants or other places of business that “prepare and provide
beverages.”
Accordingly, the similarities of the goods and services, and their channels of trade,
weigh in favor of a finding of likelihood of confusion.
Serial Nos. 87561113 and 87561116
- 14 -

C. Applicant’s Arguments Regarding Priority
In its brief, Applicant argues that its “evidence of [Applicant’s] priority of use is
relevant” in this appeal. Any contention by Applicant that it should be considered the
senior user is unavailing in this ex parte proceeding. In re Calgon Corp., 435 F.2d
596, 168 USPQ 278, 280 (CCPA 1971) (“As the board correctly pointed out, ‘the
question of priority of use is not germane to applicant’s right to register’ in this ex
parte proceeding.”). To be clear, the Examining Attorney issued the refusal under
Section 2(d) of the Trademark Act, which provides for refusal on the basis of a mark’s
resemblance to “a mark registered in the Patent and Trademark Office...,” without
regard to the Applicant’s alleged priority. 15 U.S.C. § 1052(d). An ex parte appeal is
not the proper forum for challenging the validity of a registration. Dixie Rests., 41
USPQ2d at 1534-35.
II. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that Applicant’s marks: CHA4TEA and are
very similar to Registrant’s mark. The record shows that Applicant’s tea is
so related to Registrant’s restaurant and “preparation and provision of beverages”
services that, when the involved marks are used on or in connection with the
respective goods and services, they are likely to cause confusion. The evidence shows
that entities that provide restaurant and “preparation and provision of beverages”
Serial Nos. 87561113 and 87561116
- 15 -

services constitute a place or trade channel for the purchase of tea goods, and the
services and tea are often sold under the same mark.
We make our ultimate finding with the understanding that the shared terms in
the marks CHA and TEA are conceptually weak in the context of the goods and
services, but also keeping in mind the entire literal elements of the marks are
phonetic equivalents. To the extent we have doubt about how much this weakness
narrows Registrant’s scope of protection, or the likelihood of confusion between
Applicant’s and Registrant’s marks, we resolve that doubt in favor of Registrant.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003
(Fed. Cir. 2002) (“This court resolves doubts about the likelihood of confusion against
the newcomer because the newcomer has the opportunity and obligation to avoid
confusion with existing marks.”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1691 (Fed. Cir. 1993).
Decision: The refusals to register Applicant’s CHA4TEA marks, in standard
characters and stylized, are affirmed.