Kohr Brothers, Inc.

Trademark Trial and Appeal Board

Apr 20, 2009

No. 78955000 (T.T.A.B. Apr. 20, 2009)

Mailed:
April 20, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kohr Brothers, Inc.
________

Serial No. 78955000
_______

James C. Wray, Esq. for Kohr Brothers, Inc.

Christina M. Sobral, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney)1
_______

Before Seeherman, Holtzman and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Kohr Brothers, Inc. has appealed from the final
refusal of the trademark examining attorney to register
JAVA-CREAM SMOOTHIES in standard character format as a
trademark for “frozen custard shakes.”2 Registration has
been refused on the following bases:
1) on the ground that applicant’s mark
is likely to cause confusion with the
mark JAVA SMOOTHIE, with JAVA

1 Another examining attorney examined the application; the
present examining attorney wrote the appeal brief.
2 Application Serial No. 78955000, filed August 18, 2006, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-
to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78955000
2
disclaimed, registered for “frozen
confections, not including frozen or
semi-frozen beverages”3 (Section 2(d) of
the Trademark Act);

2) on the ground that applicant’s mark
is merely descriptive of its goods
(Section 2(e)(1) of the Trademark Act);
and

3) because applicant failed to provide
responses to the examining attorney’s
request for information (Trademark Rule
2.61(b)).4

We turn first to some procedural matters. Applicant
has objected to “attachments of seven pages of ‘evidence’
for the first time to the Examining Attorney’s Appeal
Brief,” asking that such “evidence be disregarded. Reply
brief. p. 1. The seven pages consist of five pages from
Bartleby.com showing definitions of “shake” and
“confection” taken from The American Heritage Dictionary of
the English Language, 4th edition, and two pages from
YourDictionary.com showing the definition of “confection,”
taken from Webster’s New World College Dictionary. The
Board may take judicial notice of dictionary definitions,
University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703

3 Registration No. 2257280, issued June 29, 1999; Section 8 & 15
affidavits accepted and acknowledged.
4 Registration was also finally refused pursuant to Section 2(d)
on the basis of Registration No. 0919051 for CREAM SMOOTHIE for
soft drinks. However, the Examining Attorney withdrew this
refusal in her brief.
Ser No. 78955000
3
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), and we therefore
overrule applicant’s objection. The examining attorney
also submitted with her brief a copy of Registration No.
2257280, which forms the basis for the citation under
Section 2(d), requesting that the Board make the
registration of record. Apparently the examining attorney
who originally examined the application inadvertently
failed to include a copy of the registration. Applicant
was clearly on notice of the registration and its
particulars throughout the examination, including three
Office actions, and treated the registration as being of
record. Further, applicant did not object to the examining
attorney’s submission of the registration with her brief,
although, as noted, applicant did object to our
consideration of the dictionary definitions that the
examining attorney submitted. Accordingly, we have treated
the registration as being of record.
We turn first to the examining attorney’s requirement
for information about applicant’s goods. In the September
5, 2007 Office action, in which the examining attorney
initially requested such information, she asked that
applicant submit “a complete menu from a location that will
produce the applicant’s ‘frozen custard shakes’” and
answers to the following questions:
Ser No. 78955000
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1) Do the goods consist in whole or in
part of coffee, cream and fruit?

2) What are the specific ingredients
of the java-creme [sic] smoothies?

In its response filed March 6, 2008, applicant
submitted a page from applicant’s website referring to
applicant’s “original frozen custard,” which states, inter
alia, that it is “made from grade A milk, cream, sugar,
eggs and other premium quality ingredients” and also
submitted the “Nutrition Facts and Allergen Information”
which is similar to the nutrition labels for applicant’s
vanilla and chocolate frozen custard and its orange
sherbet, and lists such information as calories and
percentages of fat, cholesterol and sodium in a serving
size. Applicant also stated that the specific ingredients
are trade secrets.
The examining attorney then made final the request for
information on April 21, 2008, repeating the request for a
menu and repeating the questions listed above. The
examining attorney stated that the request for whether the
identified goods contain coffee, cream and fruit and what
the ingredients of the goods are did not require any trade
secret information, pointing out that customers should have
access to what the ingredients are before consuming the
product.
Ser No. 78955000
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Applicant did not address the request for information
in its brief, but in its reply brief stated that applicant
supplied the requested information with its March 6, 2008
response, and that the specific ingredients are trade
secrets. Applicant also stated that the examining attorney
never asked for a complete menu in the September 5, 2007
Office action.
First, applicant is incorrect that the examining
attorney did not request, in both the September 5, 2007 and
April 21, 2008 Office actions, a complete copy of its menu.
Applicant clearly did not comply with this request.
Second, applicant did not adequately comply with the
examining attorney’s request for information. The
examining attorney asked specifically whether applicant’s
goods contained coffee, cream and fruit, information that
is relevant to the question of whether the mark is merely
descriptive of the goods. This information cannot be
considered a trade secret which need not be provided. As
the examining attorney has pointed, out, such information
would be accessible to consumers who are concerned about
health or allergy issues.
Trademark Rule 2.61(b) provides that the examining
attorney may require the applicant to furnish such
information and exhibits as may be reasonably necessary to
Ser No. 78955000
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the proper examination of the application. Because the
Examining attorney's request for information, and in
particular the question as to whether applicant’s goods
contain coffee, cream or fruit, was reasonable, we affirm
the refusal based on applicant's failure to comply
adequately with the requirement for information concerning
its goods. In re SPX Corp, 63 USPQ2d 1592 (TTAB 2002); In
re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).
We next turn to the refusal on the ground that
applicant’s mark JAVA-CREAM SMOOTHIES is merely descriptive
of its frozen custard shakes. Applicant’s failure to
provide information about the ingredients of its goods, and
specifically to respond to the examining attorney’s
question about whether its goods contain coffee, cream and
fruit, have an impact on this determination. Specifically,
in determining the Section 2(e)(1) refusal, we presume,
unfavorably to applicant, that its goods contain these
ingredients. See In re Cheezwhse.com Inc., 85 USPQ2d 1917
(TTAB 2008). Moreover, and as noted above, the information
supplied by applicant from its website confirms that its
goods contain, inter alia, cream.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
Ser No. 78955000
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conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
Here, because of applicant’s failure to provide the
information requested by the examining attorney, we must
assume that the information would be unfavorable to
applicant. Therefore, we find that the terms JAVA and
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CREAM in applicant’s mark describe the ingredients of
applicant’s goods. In this connection, we note the
dictionary definition of “java” as an informal term meaning
“brewed coffee.”5 Further, the term “smoothie,” which is
defined as a “pureed fruit drink: a drink made from pureed
fruit, sometimes with milk, yogurt, or ice cream,”6 is a
generic term for applicant’s goods, which again, because
applicant did not respond to the examining attorney’s
request for information about whether fruit is an
ingredient in its shakes, we must assume that it is.
Moreover, applicant’s website states that its custard can
contain fruit: “We offer single flavors or twist
combinations—from traditional vanilla and distinctive
chocolate to our wide variety of real fruit and other
delicious flavors. Kohr Bros Frozen Custard is the
foundation for our shakes and malts….” www.kohrbros.com.
We further note that the examining attorney has submitted
evidence that ice cream and coffee can be added to
smoothies:
Fruit & Coffee Smoothie Drink Mix
All you need to make delicious real
fruit smoothies is right here!

5 The American Heritage Dictionary of the English Language, 4th
ed., © 2000, reported at Bartleby.com, and made of record by the
examining attorney in the first Office action.
6 Encarta World English Dictionary, http://encarta.msn.com, made
of record by the examining attorney in the first Office action.
Ser No. 78955000
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You can also add ice cream, milk, juice
or flavored syrups for a custom drink
that is yours alone.
These delicious smoothies are a huge
hit with adults and kids. The fruit
smoothies contain a high percentage of
real fruit juice and non-dairy creamer.
Mocha smoothies contain real Columbian
[sic] coffee. All products are shelf
stable and taste delicious.
www.cafedorocappuccino.com

In addition, because frozen custard is a type of ice
cream, the word CREAM in applicant’s mark may be viewed as
referencing not merely that cream is an ingredient in the
shakes, but that it is an iced cream or ice cream. See
applicant’s website, describing the genesis of its frozen
custard business, when applicant’s founders added eggs to
their ice cream recipe to prevent the frozen dessert from
melting too fast. See also the description on the website
for the frozen custard: “The taste of premium ice cream
with the calories of yogurt.” When the individual terms
JAVA, CREAM and SMOOTHIES are used together in the mark
JAVA-CREAM SMOOTHIES, the mark immediately tells consumers
that the goods are a smoothie containing coffee and cream
or iced cream. Accordingly, we find that JAVA-CREAM
SMOOTHIES is merely descriptive of applicant’s identified
frozen custard shakes, and affirm the refusal based on
Section 2(e)(1) of the Act.
Ser No. 78955000
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The final ground of refusal is based on Section 2(d),
that applicant’s mark for frozen custard shakes is likely
to cause confusion with JAVA SMOOTHIES for frozen
confections not including frozen or semi-frozen beverages.
Although we have found that applicant’s mark is merely
descriptive, in considering this refusal we must assume,
arguendo, that JAVA-CREAM SMOOTHIES will be viewed as a
mark.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). We therefore turn first to the factor of the
similarities between the goods. Because the registrant’s
identification of goods specifically excludes beverages,
Ser No. 78955000
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applicant’s goods and those of the registrant cannot be
considered to be the same. However, it is not necessary
that the goods or services of the applicant and the
registrant be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The registrant’s frozen confections, as identified,
would include frozen custard, which is obviously a primary
ingredient of applicant’s identified frozen custard shakes.
As a result, the goods are intrinsically related. Further,
the examining attorney has submitted third-party
registrations that show entities have adopted a single mark
for both shakes and frozen confections. See, for example,
Registration No. 2795754 for, inter alia, milkshakes,
malted shakes, frozen confections and coffee based
smoothies; Registration No. 2649515 for, inter alia, frozen
custard, frozen confections and milk shakes; Registration
No. 3169293 for, inter alia, frozen confections and shakes;
Ser No. 78955000
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and Registration No. 2899559 for, inter alia, frozen
custard products namely shakes, and frozen confections.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The du Pont factor of the similarity of the goods
favors a finding of likelihood of confusion.
With respect to the channels of trade, applicant
asserts that its frozen custard shakes are prepared in
front of customers, while the registrant’s frozen
confections are “something that is prepackaged and
available in grocery stores, like Popsicles.” Brief, p. 2.
However, where the goods in a cited registration are
broadly described and there are no limitations in the
identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Because “frozen confections” include frozen
Ser No. 78955000
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custard, the registrant’s goods as identified can be
dispensed in the same stands, stores and restaurants in
which applicant’s frozen custard shakes are prepared.
Further, the goods can be sold to the same classes of
customers. This du Pont factor favors a finding of
likelihood of confusion.
With respect to the du Pont factor of the conditions
of purchase, applicant’s and the registrant’s goods are
sold to the general public, who will not have any
particular sophistication or expertise about these consumer
goods. Further, because the goods, by their very nature,
are inexpensive and may be purchased on impulse, consumers
will not exercise care in examining the trademarks. This
factor, too, favors a finding of likelihood of confusion.
This brings us to a consideration of the marks. The
marks are very similar in appearance and pronunciation.
Both begin with the word JAVA and end with the word
SMOOTHIE/SMOOTHIES. The fact that applicant’s mark uses
the plural form of SMOOTHIES does not distinguish them. In
re Vroman Foods, Inc., 187 USPQ 126 (TTAB 1975) (CHILLY
SNOWMEN and design and SNOW-MAN, both for frozen
confections, create substantially the same commercial
impression). Nor does the additional word CREAM in
applicant’s mark serve to distinguish this mark from the
Ser No. 78955000
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registrant’s. Applicant has essentially appropriated the
registrant’s mark and has added to it the descriptive term
CREAM. However, because this term identifies an ingredient
of the shakes, it will not be regarded as a source-
identifying element. Further, because CREAM appears
between the two elements that are identical to the
registrant’s mark, it has less visual prominence. To the
extent that consumers even note the difference between the
marks (and under actual marketing conditions, consumers do
not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections, Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980)), they are likely to
view the mark JAVA-CREAM SMOOTHIES as a variation of
registrant’s mark JAVA SMOOTHIES, perhaps indicating that
this product has a cream content or a higher cream content.
When considered in their entireties, the marks JAVA-
CREAM SMOOTHIES and JAVA SMOOTHIE are similar in
appearance, pronunciation, connotation and commercial
impression.
Although not discussed by applicant or the examining
attorney, we must acknowledge that the registrant’s mark is
somewhat weak, and that the word JAVA, which is both the
first word of its mark and the beginning element of
Ser No. 78955000
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applicant’s mark, has been disclaimed. However, even weak
marks are entitled to protection. Given the overwhelming
similarity of the marks, with the only real difference the
addition of a descriptive element in applicant’s mark, as
well as the highly similar nature of the goods, with
registrant’s identification encompassing frozen custard,
which is a primary component of applicant’s “frozen custard
shakes,” the protection to be accorded the registered mark
extends to prevent the registration of applicant’s mark.
The du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
Neither applicant nor the examining attorney discussed
any of the other du Pont factors, nor have they submitted
evidence with respect to them. To the extent that any are
applicable, we treat them as neutral.
In view of the factors discussed above, we find that
applicant’s mark JAVA-CREAM SMOOTHIES for frozen custard
shakes is likely to cause confusion with JAVA SMOOTHIE for
“frozen confections, not including frozen or semi-frozen
beverages.”
Decision: The refusals on the basis of likelihood of
confusion, mere descriptiveness and that applicant has
failed to provide acceptable responses to the examining
attorney’s request for information are all affirmed.