Heather’s Gourmet Café, Inc.

Trademark Trial and Appeal Board

Jun 11, 2001

No. 75706467 (T.T.A.B. Jun. 11, 2001)

06/11/01
Paper No. 9
TJQ
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Heather’s Gourmet Café, Inc.
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Serial No. 75/706,467
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Charles I. Brodsky for applicant.
Gi Hyun An, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
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Before Simms, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Heather Gourmet Café, Inc.
to register the mark RAINBOW BLEND (“BLEND” disclaimed)
for, as amended, “specialized roasted Arabica chocolate,
coconut, rum and vanilla coffee beans available through
computer communications and interactive television.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
1 Application Serial No. 75/706,467, filed May 12, 1999, alleging
dates of first use of April 15, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/706,467
2
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark RAINBOW for a
variety of goods, including “coffee”2 and “vegetable based
coffee lightener,”3 as to be likely to cause confusion.
Both registrations are owned by the same entity.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that applicant’s mark
is dominated by the term “RAINBOW” that is identical to the
entirety of registrant’s mark RAINBOW. Thus, according to
the Examining Attorney, the marks are substantially
similar. The Examining Attorney also contends that the
goods are legally identical (coffee) or related (coffee and
coffee lightener). In connection therewith, the Examining
Attorney submitted third-party registrations showing that
the same entity registered the same mark for both coffee
and coffee creamers. The Examining Attorney also was not
persuaded by applicant’s arguments that purchasers are
sophisticated and that there have been no instances of
actual confusion.
2 Registration No. 1,737,921, issued December 8, 1992; combined
Sections 8 and 15 affidavit filed.
3 Registration No. 1,220,190, issued December 14, 1982; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/706,467
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Applicant argues that there is a difference between
the overall commercial impressions that the marks convey to
the relevant public. Without any support, applicant
asserts that registrant’s mark is weak. Applicant also
contends that the goods move in different channels of
trade, applicant’s being sold online, whereas registrant’s
are sold in grocery stores and supermarkets. Further,
applicant contends that purchasers of its coffee are
sophisticated, and that there have been no instances of
actual confusion between the marks. Applicant submitted an
excerpt from its Website.
Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods.4 Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
4 The fact that in this case the cited registrations list
numerous goods other than coffee and coffee lighteners is of no
moment. Likelihood of confusion may be found on the basis of any
one item listed in the identification of goods. See: General
Mills Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396
(TTAB 1979), aff’d, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
Ser No. 75/706,467
4
Insofar as the marks are concerned, we stress that we
have considered the marks in their entireties, including
the disclaimed term “BLEND” in applicant’s mark. However,
“there is nothing improper in stating that, for 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.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). For example, “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...” Id. at 751.
In this connection, “RAINBOW” is clearly the dominant part
of applicant’s mark, with the disclaimed generic term
“BLEND” being relegated to a subordinate role because it
has no source-identifying function. This is clearly
reflected by the specimens of record that show the term
“RAINBOW” in bold, thick letters followed by a “TM”
designation; the term “BLEND” appears below in thin
letters. Moreover, the term “RAINBOW” alone would likely
be used in calling for applicant’s goods. This dominant
portion is identical to the entirety of the registered
mark. In re Denisi, 225 USPQ 624 (TTAB 1985)[while not
ignoring the caveat that marks must be considered in their
Ser No. 75/706,467
5
entireties when evaluating the chances of their being
confused in the marketplace, where a newcomer has
appropriated the entire mark of a registrant, and has added
to it a non-distinctive term, the marks are generally
considered to be confusingly similar].
Applicant would have us conclude that the cited mark
is weak, contending that “[a]ny referral to the Trademark
Office database would reveal the hundreds of Marks
utilizing the mark ‘RAINBOW’ and the inherent weakness of
its coverage.” (brief, p. 4) Applicant failed, however,
to make any third-party uses or registrations of record
and, thus, applicant’s contention is wholly unsupported.
In any event, it would appear that registrant’s mark is
arbitrary for coffee and coffee creamers.
With respect to the goods, the identification of goods
in one of the cited registrations includes “coffee.”
Although applicant elected to identify its coffee with more
specificity, it must be assumed that registrant’s “coffee”
includes all types of coffee, including the blend of coffee
beans sold by applicant via the Internet and interactive
television. Thus, for purposes of comparing applicant’s
coffee beans with registrant’s coffee in our likelihood of
confusion analysis, these goods are virtually identical.
Ser No. 75/706,467
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Applicant’s attempt to draw a distinction between coffee
and coffee beans falls far short.
The other cited registration includes “vegetable
based coffee lightener” which we interpret to mean a coffee
creamer. This product obviously is closely related to
coffee beans of the type sold by applicant. As pointed out
by the Examining Attorney, coffee and coffee creamers are
complementary. In this connection, we have considered the
third-party registrations based on use which the Examining
Attorney submitted. The registrations show the same marks
registered by the same entity for both coffee and creamers.
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 goods
listed therein, including coffee and creamers, 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).
Applicant’s arguments regarding trade channels are not
persuasive. As alluded to above, registrant’s coffee must
be assumed to move in all normal channels of trade for such
Ser No. 75/706,467
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goods, including sales on the Internet as in the case of
applicant’s coffee beans.
The goods would be purchased by the same classes of
purchasers, namely ordinary consumers in the general
public, but applicant contends that consumers of its coffee
beans are sophisticated. More specifically, applicant
contends that its coffee beans are “only available
interactively, as specialty coffees available to gourmet
coffee clubs and in conjunction with gourmet gifts and gift
baskets...these goods are relatively expensive and only
purchased with a certain amount of care and thought.”
(brief, p. 5)
We again are not persuaded by this argument. Our view
is that most purchases of coffee are made with nothing more
than ordinary care. Even gourmet coffee is a relatively
inexpensive commodity, and is certainly subject to impulse
purchase. See: Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 [when
both products are relatively inexpensive, comestible goods
subject to frequent replacement, purchasers of such
products have been held to a lesser standard of purchasing
care]. To the extent that consumers of gourmet coffee and
coffee beans are more discriminating in purchases of their
favorite brew, they nevertheless are likely to be confused
Ser No. 75/706,467
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here as well, given the virtual identity between the marks
RAINBOW and RAINBOW BLEND. Consumers familiar with
registrant’s coffee sold under the mark RAINBOW would be
likely to believe, upon encountering applicant’s mark
RAINBOW BLEND for coffee, that this mark identified a
variant blend of coffee originating from registrant.
Applicant’s assertion of no actual confusion between
the marks is without support. That is to say, applicant
has failed to provide any specifics regarding the extent of
use by applicant or registrant of their respective marks.
Thus, there is no way to assess whether there has been a
meaningful opportunity for confusion to occur in the
marketplace.
Decision: The refusals to register are affirmed.
Ser No. 75/706,467
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