Hansen Beverage Company

Trademark Trial and Appeal Board

Dec 19, 2007

No. 78529821 (T.T.A.B. Dec. 19, 2007)

Hearing: Mailed:
25 September 2007 19 December 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hansen Beverage Company
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Serial No. 78529821
_______

Alina Morris of Knobbe, Martens, Olson & Bear, LLP for
Hansen Beverage Company.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 9, 2004, Hansen Beverage Company
(applicant) filed an intent-to-use application (Serial No.
78529821) to register the mark JOKER MAD ENERGY in standard
character form on the Principal Register for goods
ultimately identified as “beverages, namely, carbonated and
non-carbonated energy drinks, excluding fruit drinks and
fruit juices” in Class 32. Applicant has disclaimed the
term “Energy.”
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser Nos. 78529821
2
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of the three registrations,
owned by the same party, set out below.
I.
Reg. No. 2521457
JOKER (typed)
For: beers, mineral and aerated waters, and soft
drinks; fruit drinks and fruit juices, nectar, juices
with pulp, fruit concentrate, fruit juices based on
concentrate and powders for making beverages
Class 321
Issued: 25 December 2001

II.
Reg. No. 1554967

For: fruit drinks and fruit juices
Class 322
Issued: 05 September 1989
Partial Section 8 affidavit accepted

III.
Reg. No. 1248571
JOKER (typed)
For: fruit juices
Class 32
Issued: 16 August 1983
Renewed

1 The registration also lists goods in Class 33 that are not
relevant to this appeal.
2 Other goods and classes have been deleted.
Ser Nos. 78529821
3
After the examining attorney made the refusal final,
this appeal followed. An oral hearing was held on
September 25, 2007.
In cases where likelihood of confusion is the issue,
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) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We start by comparing applicant’s and registrant’s
marks in their entireties as to their similarity or
dissimilarity in appearance, sound, connotation, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005). When we compare marks,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
Ser Nos. 78529821
4
feature of a mark, provided the ultimate conclusion rests
on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Here, all three registrations contain a single word:
JOKER. In two registrations, the mark is depicted without
any stylization. In the third registration, the term JOKER
is combined with a design of a joker. Applicant’s mark,
JOKER MAD ENERGY, is in typed or standard form, with the
term “energy” disclaimed. All the marks contain the same
word “joker.” Therefore, the marks are identical insofar
as they contain the same word but they differ because
applicant adds the words “mad energy” and one of the
registrations contains a design of a joker. We note that
one word in applicant’s mark has been disclaimed and
disclaimed matter is often “less significant in creating
the mark’s commercial impression.” In re Code Consultants
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Inasmuch as
applicant’s goods include “energy drinks,” it is much less
likely that consumers will rely on the word “energy” to
distinguish the goods of the parties. See also Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000), quoting, In re National Data Corp., 753
Ser Nos. 78529821
5
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion’”).
The term “mad” would most likely be understood as a
word that modifies the term “energy.” Consumers are likely
to view the word “joker” as the word that identifies the
brand name of the product and the subsequent terms would
suggest a feature of the product. The term “joker” is the
first term in the mark and it is an arbitrary term as
applied to applicant’s and registrant’s goods. These
features make the term more prominent. As the Federal
Circuit has noted: “To be sure, CLICQUOT is an important
term in the mark, but VEUVE nevertheless remains a
‘prominent feature’ as the first word in the mark and the
first word to appear on the label. Not only is VEUVE
prominent in the commercial impression created by VCP's
marks, it also constitutes ‘the dominant feature’ in the
commercial impression created by Palm Bay's mark.” Palm
Bay Imports, 73 USPQ2d at 1692. See also In re Denisi, 225
USPQ 624, 624 (TTAB 1985) (If “the dominant portion of both
marks is the same, then confusion may be likely
notwithstanding peripheral differences”). Similarly, we
Ser Nos. 78529821
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find that applicant’s mark is dominated by the term
“joker.”
Regarding registrant’s marks, they consist either of
the word “joker” as the only element or a combination of
that word and a design of a joker. In two registrations,
JOKER is the entire mark. To the extent that registrant’s
other mark adds a design of a joker, it merely reinforces
the “joker” term.
When we compare registrant’s JOKER and JOKER with
joker design marks with applicant’s JOKER MAD ENERGY mark,
we find that they are similar in sound, appearance,
meaning, and commercial impression. Obviously, they are
not identical, but the presence of the identical, arbitrary
term JOKER in both marks results in their similarities
outweighing their differences. Applicant argues that
“JOKER MAD ENERGY suggests a wild, crazy, energetic
prankster. With respect to Registrant’s goods, … the term
JOKER suggests a lighthearted clown.” Brief at 7. It is
not apparent that many consumers would make such a fine
distinction between the two marks. The differences created
by applicant’s addition of “mad energy” are not likely to
make consumers differentiate the source of the goods. The
words “mad energy” are likely to be viewed as terms that
further identify the specific goods from the JOKER source.
Ser Nos. 78529821
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See, e.g., In re Chatam International Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With respect to
JOSE, the Board correctly observed that the term simply
reinforces the impression that GASPAR is an individual’s
name. Thus, in accord with considerable case law, the JOSE
term does not alter the commercial impression of the mark.”
The marks JOSE GASPAR GOLD and GASPAR’S ALE were determined
to be similar). Many consumers will give the shared
identical term “joker” the same meaning in both marks and
their commercial impressions would be very similar.
The next, often critical factor, is the factor
concerning whether applicant’s and registrant’s goods are
related. Applicant’s goods are carbonated and non-
carbonated energy drinks, excluding fruit drinks and fruit
juices. Registrant’s goods include fruit juices in all
three registrations and fruit drinks in the ‘457 and ‘967
registrations. In addition, in the most recent ‘457
registration, the identification of goods adds beers,
mineral and aerated waters, and soft drinks, nectar, juices
with pulp, fruit concentrate, fruit juices based on
concentrate and powders for making beverages. The case law
has long emphasized that we must consider the goods as they
are described in the application and registrations. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
Ser Nos. 78529821
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USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). See also
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”).
Applying these principles, we must conclude that
applicant’s goods and registrant’s goods in its ‘457
registration are identical to the extent that applicant’s
carbonated and non-carbonated energy drinks, excluding
fruit drinks and fruit juices, are included within the
scope of registrant’s soft drinks. The term “soft drink”
would include both carbonated and non-carbonated non-
alcoholic drinks. The examining attorney has submitted a
definition of “soft drink” as “a usually carbonated
nonalcoholic beverage.” Merriam-Webster’s Online
Dictionary. To this we add the Webster’s English
Dictionary for Home, School or Office (2003) (“soft drink –
Ser Nos. 78529821
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a nonalcoholic drink”).3 Therefore, applicant’s energy
drinks would overlap with registrant’s soft drinks inasmuch
as the term “soft drinks” would include applicant’s
identified energy drinks. Because these goods must be
considered at least in part identical, their channels of
trade and purchasers must likewise be considered to be
identical. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
Furthermore, applicant’s goods are also related to
registrant’s fruit juices or fruit drinks. The examining
attorney included several use-based, third-party
registrations that show that the same entity has obtained a
registration for goods that include fruit juices and energy
drinks. See e.g., Registration No. 2855717 (“non-
carbonated fruit juice drinks and energy drinks enhanced
with vitamins, minerals, caffeine, nutrients, amino acids
and/or herbs”); No. 3032757 (“fruit juice drinks” and
“energy drinks, namely sport drinks, enhanced with
vitamins[,] minerals, caffeine, nutrients, amino acids, or

3 We take judicial notice of these definitions as well as the
others submitted by the examining attorney (brief at 6 and n.2)
and applicant (brief at 5). 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).
Ser Nos. 78529821
10
herbs”); No. 3016085 (“fruit flavored drinks, juice-based
drinks, namely, fruit juice; mineral waters, energy
drinks”); and No. 3056503 (“energy drinks; flavored waters;
fruit drinks… fruit juices”). These registrations suggest
that the same entity is likely to be the source of both
energy drinks and fruit juices and fruit drinks. In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001) (“The registrations show that entities
have registered their marks for both television and radio
broadcasting services. Although these registrations are
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nevertheless
have probative value to the extent that they serve to
suggest that the services listed therein, including
television and radio broadcasting, are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988)").
In addition, the examining attorney has pointed out
that applicant itself is the source of energy drinks and
fruit juices. Examining Attorney’s Brief at 8. See also
Office Action dated July 19, 2005, Registration No. 2593887
(ENERGY HANSENS for “fruit juice drinks, soft drinks,
Ser Nos. 78529821
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carbonated soft drinks and soft drinks enhanced with
vitamins, minerals, nutrients, amino acids and herbs”) and
www.hansens.com/scripts/html/products:
Juices & Specialty &
Energy Non Carbonated Soda Nutrition
Hansen’s Hansen’s Hansen’s Hansen’s
Energy Smoothie Original Soy
Soda

The evidence of record convinces us that energy drinks and
fruit juices and fruit drinks are related products.
Applicant also makes an argument (Brief at 9) that:
Applicant’s and Registrant’s goods are targeted to
different consumers and through different marketing
channels. The primary demographic for Applicant’s
energy drinks is 18 to 39 year-old males. Applicant’s
energy drinks are shelf-stable beverages that are not
promoted as being “healthy” and do not contain
perishable fruit juice. To reach the 10 to 30 year-
old male demographic, Applicant’s energy drinks are
sold primarily in convenience stores and gas stations.
Although you will find energy drinks in the soda
aisles of grocery stores, that is not where most 18-30
year old males shop. Further, Applicant’s energy
drinks would not be sold in the juice section of
stores, nor stored in the refrigerated section of
groceries.

We start by noting that, as identified in the
application, applicant does not limit its goods to any
particular demographic group or to any specific channels of
trade. Therefore, we must assume that the goods of
applicant and registrant pass through all the normal
channels of trade and to all the normal types of
Ser Nos. 78529821
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purchasers. See In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006):
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence
of any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
199 (Fed. Cir. 1983) (Absent restrictions in the
identification, we must assume that the goods travel in
“the normal and usual channels of trade and methods of
distribution”).
Furthermore, we cannot compartmentalize the channels
of trade and purchasers as applicant argues. For example,
there is no evidence in the record that supports
applicant’s argument that “the soda aisle of grocery stores
… is not where 18 – 30 year old males shop.” Even if
energy drink purchasers are limited to young males, there
is simply no reason to assume that they would not also
purchase fruit juice and fruit drinks. Indeed, we also
cannot conclude that energy drink purchasers are limited to
applicant’s suggested demographic category.
Ser Nos. 78529821
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Moreover, even if there were evidence on this point
with respect to applicant’s goods, we do not read
limitations into the identifications of goods. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”). Similarly, we cannot limit
registrant’s fruit juice to “perishable beverages … sold in
refrigerated aisles” (Brief at 9). There is no evidence
that limits the identification “fruit juice” to
refrigerated beverages. Indeed, because we must assume
that fruit juices, fruit drinks, and energy drinks are sold
through all normal channels of trade, these goods would be
sold in overlapping channels of trade. Therefore, we
cannot agree with applicant that the “goods are targeted to
different consumers through different marketing channels.”
Instead, our analysis leads to the conclusion that these
factors favor a finding of likelihood of confusion.
Here, the marks JOKER MAD ENERGY and JOKER with or
without a joker design are used on energy drinks and soft
drinks, fruit juice and fruit drinks. The marks are
dominated by the identical term “joker” and the goods are
Ser Nos. 78529821
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either overlapping or related. These factors cause us to
hold that there is a likelihood of confusion in this case.
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.