H. E. Butt Grocery Co.

Trademark Trial and Appeal Board

Mar 23, 2004

No. 75932206 (T.T.A.B. Mar. 23, 2004)

Mailed: March 23, 2004
Paper No. 14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re H. E. Butt Grocery Company
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Serial No. 75932206
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Kirt S. O’Neill of Akin, Gump, Strauss, Hauer & Feld,
L.L.P. for H. E. Butt Grocery Company.
Desmona Mizelle, Trademark Examining Attorney, Law Office
110 (Chris Pedersen, Managing Attorney).
_______
Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 28, 2000, applicant, a Texas corporation,
filed the above-referenced application to register the mark
“BIG COOL BAG” on the Principal Register for “insulated
tote bags,” in Class 16. The basis for filing the
application was applicant’s assertion that it had used the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75932206
2
mark in connection with the specified goods in interstate
commerce at least as early as February 28, 2000.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), on the
ground that applicant’s mark, as used in connection with
insulated tote bags, so resembles the mark shown below
which is registered1 for “thermal insulated containers and
tote bags for food or beverage,” in Class 21, that
confusion is likely. The Examining Attorney also refused
registration under Section 2(e)(1) of the Lanham Act, 15
U.S.C. Section 1052(e)(1), on the ground that the mark is
merely descriptive of applicant’s goods, and required
amendment to the identification-of-goods clause to clarify
the nature of the goods.
Responsive to the Office Action, applicant amended the
application to identify its goods as “thermal insulated
tote bags for food in International Class 21,” and
disclaimed the exclusive right to use the words “big” and
“bag,” apart from the mark as shown.
1 Reg. No. 2,273,405, issued on the Principal Register to Coolbag
Handels GmbH, a corporation of Switzerland, on August 31, 1999.
Ser No. 75932206
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Taking the position that the word “cool” in its mark
does not describe, but rather only suggests, the function
of keeping food cold or frozen, applicant argued that “…
while COOL may be suggestive of a function of the bag in
keeping frozen foods ‘cold’ it also presents a double
entendre in the context of the overall mark BIG COOL BAG as
being a ‘hip’ product.” Citing Ex Parte Barker, 92 USPQ
218, 219 (Comm’r Pats 1952) for the proposition that even
where the individual words making up a mark are
descriptive, the existence of a double entendre can result
in sufficient distinctiveness to support a registration,
applicant contended that the refusal in the case at hand
based on descriptiveness was not appropriate in view of the
double entendre created by the use of the word “COOL” in
its mark.
Applicant argued against the refusal under Section
2(d) of the Act based on the fact that applicant’s mark
does not include any of the design elements shown in the
cited registered mark and the fact that the word “BIG,”
which appears in applicant’s mark, is not part of the cited
registered mark. Applicant took the position that its
three-word mark “BIG COOL BAG” incorporates “alliterative
and design features and double entendres not present in the
cited mark.”
Ser No. 75932206
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The Examining Attorney accepted applicant’s amendment
to the identification-of-goods clause and apparently
withdrew the refusal to register based on mere
descriptiveness under Section 2(e)(1) of the Act, but
maintained and made final the refusal based on likelihood
of confusion under Section 2(d) of the Act. She pointed to
the fact that the products specified in the application are
virtually identical to those listed in the cited
registration and concluded that the marks create similar
commercial impressions.
On February 10, 2003, applicant filed a Notice of
Appeal, a request for reconsideration (to which were
attached a number of exhibits which applicant argued showed
widespread use of “cool bag” or its equivalent
descriptively with respect to thermal insulated tote bags)
and a motion to consolidate this application with
application Ser. No. 75930775.
The appeal was instituted, but action on it was
suspended and the application was remanded to the Examining
Attorney to address applicant’s request for
reconsideration. Action on the motion to consolidate was
deferred.
The Examining Attorney reconsidered the refusal to
register based on the arguments and the evidence submitted
Ser No. 75932206
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by applicant, but maintained that the refusal to register
is appropriate. Both applicant and the Examining Attorney
filed appeal briefs, but applicant neither filed a reply
brief nor requested an oral hearing before the Board.
Prior to discussing our resolution of this appeal on
its merits, we first must deny applicant’s request for
consolidation with application Ser. No. 75930775. Although
the issues with regard to that application are similar in
some respects to those presented by the case at hand, the
mark applicant seeks to register by means of that
application is not the same as the one in the instant case.
Because of this, the issues and supporting arguments are
not the same. Further, that application is not ripe for
appeal at this time. Accordingly, combining the two
applications for purposes of resolving both with this
appeal is not appropriate.
We thus turn to the issue presented by the instant
case, whether Section 2(d) of the Lanham Act precludes
registration to applicant of the mark “BIG COOL BAG” in
view of the prior registration of the mark “COOLBAG” in the
design format shown above. We hold that the refusal to
register is proper because the marks create very similar
commercial impressions and the goods specified in the
Ser No. 75932206
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application and the cited registration, respectively, are
identical.
When they are considered in their entireties in
connection with these identical products, the two marks
create similar commercial impressions. It is well settled
that one element or feature of the mark can have more
significance in creating a commercial impression.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976). In view of the descriptive (and hence
disclaimed) terms “BIG” and “BAG,” the dominant portion of
applicant’s mark is clearly the word “COOL,” which is at
the very least suggestive in connection with insulated
bags. The registered mark combines the same suggestive
word with the same generic term, “BAG.” Applicant has
essentially appropriated the registered mark and added to
it only the term “BIG.” The addition of this disclaimed,
descriptive word is insufficient to overcome the
similarities between these two marks. A prospective
purchaser of the insulated bags sold under the mark
applicant seeks to register would be likely, if he or she
were familiar with the use of the cited registered mark in
connection with the same goods, to assume that a bag
bearing the “BIG COOL BAG” designation is simply a larger
model or version of the “COOLBAG” with which he or she is
Ser No. 75932206
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familiar. Notwithstanding applicant’s arguments to the
contrary, whatever double entendre applicant’s mark creates
is the same as that which the cited registered mark
engenders.
A similar flaw exists with respect to the argument
applicant made in its request for reconsideration. There,
applicant submitted evidence showing that the term “cool
bag” and several variations of it have been used by others
in connection with insulated bags. Based on this evidence,
applicant contends that “COOL BAG” is descriptive of these
products, that it is therefore weak in source-identifying
significance, and that this weakness supports the
conclusion that confusion between applicant’s mark and the
cited registered mark is unlikely.
To the extent that applicant is arguing that the
registered mark is merely descriptive, this would be an
impermissible collateral attack on the cited registration.
To the extent that applicant is asserting that the cited
registration is entitled to only a limited scope of
protection, we find that protection would extend to the use
on identical goods of the extremely similar mark “BIG COOL
BAG,” with the only difference being the addition of the
descriptive word “BIG” to the registered mark.
Ser No. 75932206
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DECISION: The refusal to register under Section 2(d)
of the Act is affirmed.