Miraflores Investments, LLC

Trademark Trial and Appeal Board

Sep 12, 2016

No. 86318798 (T.T.A.B. Sep. 12, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Miraflores Investments, LLC
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Serial No. 86318798
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Donna M. Klett of Pearne & Gordon LLC
for Miraflores Investments, LLC.

Diane Collopy, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Seeherman, Shaw, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Miraflores Investments, LLC (“Applicant”) seeks registration on the Principal
Register of the mark QB EXTREME in standard characters for “Olive oil” in
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International Class 29.1 The Examining Attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the registered mark
for, inter alia, “olive oil for food” in International Class 29.2 The cited
registration includes a disclaimer of MERCATO E CUCINA, which is translated as
“Market and cooking.”
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. When the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d

1 Application Serial No. 86318798 was filed June 24, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 4047505 issued November 1, 2011.
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1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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.”). In this case, Applicant
indicates that the relevant du Pont factors are the similarity of the marks, similarity
of the goods and their trade channels and, under the thirteenth du Pont factor, prior
statements by the owner of the cited registration made during prosecution.3
A. The Goods and Trade Channels
We first address the second and third du Pont factors, the similarity or
dissimilarity of the goods and channels of trade. The test addresses whether
consumers would be likely to be confused as to the source of the goods. In re Anderson,
101 USPQ2d 1912, 1919 (TTAB 2012). “[I]t is sufficient that the goods are related in
some manner, or that the circumstances surrounding their marketing are such, that
they would be encountered by the same persons in situations that would give rise,
because of the marks, to a mistaken belief that they originate from the same source
or there is an association or connection between the sources of the goods.” In re Thor
Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must focus on the goods as
identified in the application and cited registration, not on any extrinsic evidence of
actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

3 7 TTABVUE 4-5 (Applicant’s Brief).
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USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Both the subject application and the cited registration identify olive oil.4 Thus, the
goods are identical. Applicant offers no argument on this factor, and we find that it
weighs in favor of likely confusion.
Turning to the trade channels, we presume, as we must, that Applicant’s goods
and the relevant goods in the cited registration, for which both identifications are
unrestricted, are available to all potential classes of ordinary consumers and move in
all channels of trade normal for olive oil. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where
the identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”); In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Moreover, because of the identical nature of the goods, we
must presume that both Applicant’s and Registrant’s olive oil travels through the
same channels of trade to the same class of purchasers, considerations under the
third du Pont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to
rely on this legal presumption in determining likelihood of confusion). Thus, the
second and third du Pont factors strongly weigh in favor of likely confusion.

4 The cited registration also includes additional goods and services in six International
Classes.
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B. Similarity of the Marks
Turning next to the marks, we must compare them “in their entireties as to
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) (quoting du Pont, 177 USPQ at 567). The test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods offered under the respective marks is likely to result. Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012).
Applicant’s proposed mark is QB EXTREME in standard characters, and the mark
in the cited registration, , contains the wording QB MERCATO E CUCINA in
block letters, along with a design of a leaf. Applicant’s standard character mark could
be presented in any font style or size, including that used in the Registrant’s mark.
In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); see also 37
C.F.R. 2.52(a).
Both marks have the nearly identical dominant term QB, and therefore share a
significant visual and phonetic similarity. The Examining Attorney introduced a
single blog post from “rachel eats” indicating that in the context of Italian recipes,
“Q.b. means quantobasta which literally translated means how much is enough” or
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“what you think is the right quantity.”5 However, in response to an information
requirement by the Examining Attorney regarding the significance of “q.b.,”
Applicant represented that it “is not aware of any significance in the food trade or
industry or as applied to its goods.”6 On appeal, Applicant argues that because of the
additional Italian language wording in the cited mark, consumers may attribute the
“quantobasta” meaning to QB in the cited mark, but would not do so in its mark, thus
establishing different commercial impressions. Based on the nature and small
quantity of evidence on the meaning of QB, we find it insufficient to show that
consumers generally would be familiar with the Italian meaning discussed in the
single blog post, and we reject Applicant’s contention that as applied to identical
goods, consumers would perceive the identical term QB differently in the two marks.
As the first part of both marks, the term QB is “most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). QB dominates Registrant’s mark not only
because its print size is much larger than the other wording, but also because the
other wording has been disclaimed as merely descriptive of the goods and services,
and consumers would not be inclined to rely on the disclaimed wording to indicate
source.7 See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed.
Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).

5 October 1, 2014 Office Action at 9-14 (racheleats.wordpress.com).
6 October 19, 2015 Request for Reconsideration at 6.
7 See December 2, 2015 Office Action at 31-49.
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While the mark in the cited registration contains a design of a leaf, the design element
is quite small and relatively insignificant. In the case of marks consisting of words
and a design, the words are normally given greater weight because they would be
used by consumers to request the products. See Viterra, 101 USPQ2d at 1911 (“the
literal component of brand names likely will appear alone when used in text and will
be spoken when requested by consumers”). Similarly, we find that QB dominates
Applicant’s mark because the other word, EXTREME, likely would not be viewed as
source-indicating in view of the evidence that in food products, EXTREME, or its
phonetic equivalent XTREME, indicate intensity, flavor, or spice.8
Applicant argues that the marks in their entirety do not look and sound highly
similar. While we agree that the additional wording in both the cited mark and
Applicant’s mark affects their look, sound, and commercial impressions, because of
the shared dominant term and the nature of the additional wording, we find that
consumers encountering Applicant’s mark likely would believe that the Registrant is
offering an “extreme” version of its olive oil.
Considering the marks in their entireties, we find them similar in appearance,
pronunciation, connotation and overall commercial impressions, particularly in the
context of the identical goods at issue. See Century 21 Real Estate v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.1992) (“When marks would
appear on virtually identical goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.”).

8 Id. at 6-30.
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C. Thirteenth du Pont Factor
Under the thirteenth du Pont factor, which considers “[a]ny other established fact
probative of the effect of use,” du Pont, 177 USPQ at 567, Applicant asserts that
during prosecution of the application which resulted in the cited registration, the
Registrant “indicated that its mark can co-exist with the Applicant’s QB EXTREME
mark.”9 In the record in this case, Applicant introduced from the prosecution history
of the cited registration the Registrant’s March 28, 2011 response to an Office Action
citing certain prior pending applications for the mark “QB’s” for various ice cream
and frozen non-dairy dessert items as potential bars to registration under Section
2(d).10 In addition to amending its identification to delete certain goods including “ice
cream,” the Registrant also made various other arguments against the refusal,
including that several marks with the term “QB” co-existed on the Register,
specifically four registrations and two then-pending applications for food-related
goods or services. Among the marks the Registrant relied on was a then-pending
application11 by Applicant (not the application at issue in this case) for the mark QB
EXTREME for “Olive oil.”12 While Applicant correctly acknowledges that the
Registrant’s prior statements are not binding on it or the USPTO, Applicant argues,
quoting Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015) and other cases, that the prior statements have

9 7 TTABVUE 11 (Applicant’s Brief).
10 October 19, 2015 Request for Reconsideration at 8-48.
11 Serial No. 85197177, abandoned for failure to file the required statement of use.
12 Id. at 12-15.
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“significance as facts illuminative of shade and tone in the total picture confronting
the decision maker.”
In considering the Registrant’s prior statements in the context of all the evidence,
we first note that the passage of time since 2011 has brought about changes in the
Register upon which the Registrant commented, such that now only two of the then-
co-existing registrations remain active, and only one of the pending applications
matured into a registration.13 Interstate Brands Corp. v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (Opposer’s opinion respecting lack of
confusion with a similar mark, expressed in the course of obtaining its registration,
is not binding and the Board must make its “own independent evaluations of all the
probative facts of record”). Moreover, perhaps for this reason, Applicant has explicitly
disavowed “any arguments regarding the ‘prevalence’ of ‘QB’ marks.”14 We find that
the changed state of the Register diminishes the significance of the Registrant’s
comments in 2011 about co-existing marks.
Regardless, mindful of the admonition that the Board must independently
consider the marks and record before it, even assuming that Registrant’s comments
about co-existence were still current, they would not outweigh the likely confusion

13 Registration No. 1335686 for the mark Q & B remains active only for “mayonnaise” and
“sauces excluding cranberry and apple sauce”; Registration No. 3832134 for the stylized mark
qb for “wine”; the other registrations have been cancelled; one of the pending applications
matured into Registration No. 4346962 for the mark QB3C with the narrowed identification
“Nutritional additives in the nature of dietary supplements for medical purposes sold as an
ingredient of dietary supplements for human consumption”; the other pending application
(Applicant’s) went abandoned.
14 10 TTABVUE at 6 (Applicant’s Reply Brief).
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caused by the identical goods and similar marks at issue before us. Each application
must be considered on its own record to determine eligibility to register. In re Cordua
Rests., Inc., 823 F.3d 954, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).

II. Conclusion
Based on the similarity of the marks and the identical goods at issue, moving in
the same channels of trade, we find that Applicant’s mark is likely to cause confusion
with the mark in the cited registration.
Decision: The refusal to register Applicant’s mark is affirmed.