Kenneth Mendez

Trademark Trial and Appeal Board

Jun 9, 2014

No. 85624349 (T.T.A.B. Jun. 9, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mendez
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Serial No. 85624349
_____

Luke Brean of Breanlaw LLC,
for Kenneth Mendez.
Daniel S. Stringer, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Quinn, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Kenneth Mendez (“Applicant”) seeks registration on the Principal Register of the
mark SOL ENERGY SHOT (in standard characters) for
“Energy drinks,” in International Class 32.
Applicant disclaimed the exclusive right to use the term “Energy Shot” and stated
as part of the Application that “[t]he English translation of SOL is SUN.”
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
Serial No. 85624349
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that Applicant’s mark so resembles the two marks listed below as to be likely to
cause confusion. The two marks are owned by the same entity.
1. Registration No. 3906494 for the mark EL SOL and design, shown
below, for “non-alcoholic beverages, namely, soft drinks, fruit drinks, vegetable
drinks, fruit-flavored beverages, energy drinks; juice, namely, fruit juice, vegetable
juice,” in Class 32.1

Registrant disclaimed the exclusive right to use the word “Sol.” The Registration
includes a translation of the term “El Sol”: “The English translation of ‘EL SOL’ is
‘THE SUN.’”
2. Registration No. 2874682 for the mark IT’S THE SUN EL SOL and
design, shown below, for “sports drinks,” in Class 32.2

1 Issued January 18, 2011.
2 Issued August 17, 2004; Sections 8 and 15 affidavits accepted and acknowledged.
Serial No. 85624349
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The Registration includes a translation of the term “El Sol”: “The foreign wording
in the marks translates into English as Sun.”
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. 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 Company, Inc., 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
similarities between the goods. See 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 and differences in the marks”). These factors, and any other relevant
du Pont factors in the proceeding now before us, will be considered in this decision.
We focus our likelihood of confusion analysis on Registration No. 3906494 for
the mark EL SOL and design because when that mark is considered vis-à-vis the
applied-for mark and identified goods, it is that mark that is most likely to support
a finding of likelihood of confusion. That is, if confusion is likely between those
marks, there is no need for us to consider the likelihood of confusion with the other
cited mark because if there is no likelihood of confusion between Applicant's mark
and Registrant’s EL SOL and design, then there would be no likelihood of confusion
with IT’S THE SUN EL SOL and design. See, e.g., In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
Serial No. 85624349
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A. The similarity or dissimilarity and nature of the goods, established, likely-to-
continue channels of trade and classes of consumers.

Applicant is seeking to register its mark to identify “energy drinks.” The
description of goods in the cited Registration is “non-alcoholic beverages, namely,
soft drinks, fruit drinks, vegetable drinks, fruit-flavored beverages, energy drinks;
juice, namely, fruit juice, vegetable juice.” (Emphasis added). Thus, the goods are
in part identical. Under this du Pont factor, the Trademark Examining Attorney
need not prove, and we need not find, similarity as to each and every product listed
in the Class 32 description of goods. It is sufficient for a refusal based on likelihood
of confusion that relatedness is established for any item encompassed by the
identification of goods in the application. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Because the goods described in the Application and the cited Registration are
in part identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels
of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, this Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
Serial No. 85624349
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B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, any one of these
means of comparison may be critical in finding the marks to be similar. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d
1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as
here, the goods are in part identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
Further, “[t]he proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Serial No. 85624349
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Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d
1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks.
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since
the goods at issue are energy drinks, we are dealing with average customers who
are ordinary consumers.
Applicant’s mark is SOL ENERGY SHOT and the Registrant’s mark is EL
SOL and design. The marks are similar because they share the word “Sol” which
means “Sun.” However, because the similarity or dissimilarity of the marks is
determined based on the marks in their entireties, the analysis cannot be
predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). See also Franklin Mint Corp.v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). On the other hand, 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 the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 224 USPQ at 751. We focus on the
Serial No. 85624349
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recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1438 (TTAB 2012).
The dominant element of Applicant’s mark is the word “Sol” and it is that
part of Applicant’s mark that engenders the commercial impression with consumers
because the term “energy shot” is descriptive and has been disclaimed. It is well-
settled that disclaimed, descriptive matter may have less significance in likelihood
of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ
at 752 (“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”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression.”).
The significance of the word “Sol” as the dominant element of Applicant’s
mark is further reinforced by its location as the first part of the mark. See Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is
often the first part of a mark which is most likely to be impressed upon the mind of
a purchaser and remembered.”). See also Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
Serial No. 85

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Serial No. 85624349
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comparison of THE MUSIC MAKERS and MUSICMAKERS). Consumers
encountering SOL ENERGY SHOT may mistakenly believe that Applicant’s energy
drinks are a small serving of Registrant’s EL SOL energy drinks (e.g., a new serving
size).
In view of the foregoing, we find that Applicant’s mark SOL ENERGY SHOT
is similar to Registrant’s mark EL SOL and design in terms of appearance, sound,
connotation and commercial impression.
C. Balancing the factors.
Because the marks are similar, the goods are in part identical and there is a
presumption that the goods move in the same channels of trade and are sold to the
same classes of consumers, we find that Applicant’s mark SOL ENERGY SHOT for
“energy drinks” is similar to Registrant’s mark EL SOL and design for “non-
alcoholic beverages, namely, soft drinks, fruit drinks, vegetable drinks, fruit-
flavored beverages, energy drinks; juice, namely, fruit juice, vegetable juice.”
Decision: The refusal to register Applicant’s mark SOL ENERGY SHOT is
affirmed.