Red Hawk Tobacco Co.

Trademark Trial and Appeal Board

Sep 5, 2001

No. 75284502 (T.T.A.B. Sep. 5, 2001)

9/5/01

Hearing: Paper No. 24
June 28, 2001 GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Red Hawk Tobacco Company
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Serial No. 75/284,502
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Stephen T. McMurtry for Red Hawk Tobacco Company.

Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Chapman and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Red Hawk Tobacco Company has filed an intent-to-use
application to register the mark set forth below
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/284,502
2
for “chemical-additive free cigarettes,” in International
Class 34.1 The Examining Attorney has refused registration
under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
The ground is that applicant’s mark, if used in connection
with the identified goods, would be likely to cause
confusion or mistake or to deceive consumers, in view of
the prior registration2 of the mark set forth below for
“smoking tobacco”:

1 The original identification of goods included “cigarette
tobacco” but applicant, in its reply brief on appeal, asked that
such be deleted and the identification restricted to “chemical-
additive free cigarettes.” During the oral hearing, applicant
confirmed that its request was unequivocal and not presented as
part of an alternative argument against the refusal of
registration. Since the amendment limits the identification, the
request to amend is granted.

2 Registration No. 1,263,754 issued January 10, 1984, and lists
September 16, 1982 as registrant’s date of first use and first
use in commerce. The registration includes a disclaimer of the
word “Blend.”

Ser No. 75/284,502
3
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed briefs
and presented oral arguments to the Board. We reverse the
refusal.
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 likelihood of
confusion issue. See In re E. I. duPont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the similarities or dissimilarities
of the marks, the similarity or dissimilarity of the goods,
and the market interface of applicant and the owner of the
cited registration. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider the involved goods. We note that
registrant's identification of services contains no
limitation as to the purposes or uses for its “smoking
tobacco.” Applicant has argued at length that such term is
“synonymous in the trade with pipe tobacco.” The Examining
Attorney, however, argues that there is nothing in the
record to support this contention. We agree.
Applicant has entered material in the record in an
attempt to establish that registrant markets only pipe
Ser No. 75/284,502
4
tobacco and small cigars made of pipe tobacco, but this
does not establish that “smoking tobacco,” as used by
others, would only mean pipe tobacco or products made
therefrom. Likewise, applicant has cited repeatedly to
various federal and state statutes and regulations
governing the taxation, labeling and marketing of tobacco
products, particularly cigarettes. Applicant has not,
however, submitted anything to establish that under these
various laws or regulations “smoking tobacco” means only
pipe tobacco. In short, we agree with the Examining
Attorney that, for purposes of our analysis of likelihood
of confusion, we must consider “smoking tobacco” to be
inclusive of cigarette tobacco.
In any event, even if goods identified in an
application and registration are not similar or
competitive, there may still be a likelihood of confusion,
when similar marks are used in conjunction therewith, if
such goods are related in some manner and/or if the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under conditions that would give rise to the mistaken
belief that the goods emanate from or are in some way
associated with the same source or sponsor. See In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984), and
Ser No. 75/284,502
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cases cited therein. In this regard, the Examining
Attorney has stated that the pertinent question is not
whether a cigarette or pipe smoker would mistakenly
purchase goods intended for the other but, rather, whether
a pipe smoker familiar with registrant’s goods and in
search of cigarettes would believe, when encountering
applicant’s goods, that the source of those cigarettes had
some connection with registrant. Finally, we note that
applicant’s counsel, at the oral hearing, acknowledged that
applicant’s and registrant’s goods, though different in
type, are related, and that the essential basis for
applicant’s contention that there is no likelihood of
confusion relates to differences in the marks and the
parties’ consent agreement. Thus, while we find the goods
related, we turn our attention to the marks and the
parties’ market interface to complete the analysis of
likelihood of confusion.
The mark applicant now seeks to register is different
from that which was displayed on the original drawing
sheet. The original mark included a virtually identical
depiction of a horse, but running in the opposite
direction, i.e., in the same direction as the horse in the
mark of the cited registration. In addition, the horse was
depicted at the top of the composite mark, just above the
Ser No. 75/284,502
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words “KENTUCKY BLONDES.” In refusing registration of this
original mark, the Examining Attorney noted that both
applicant’s mark and registrant’s mark feature similar
galloping horses running in the same direction; that the
marks display their respective images directly over the
words in the marks; that, in each mark, Kentucky is the
first of these words; that the words KENTUCKY CLUB
CONTINENTAL BLEND and KENTUCKY BLONDES appear in a similar
font; and that each mark includes similar sounding terms
which are descriptive of the goods, i.e., “BLEND” and
“BLONDES.”
The record reveals that when applicant sought
registrant’s consent to applicant’s registration of its
mark, the registrant expressed concerns about possible
confusion among consumers remarkably similar to the
Examining Attorney’s concerns. Specifically, registrant’s
general counsel noted, in a letter to applicant’s counsel,
that the respective goods “belong to the same class” and
that each mark contains “a galloping horse. …left facing
and positioned directly above the word ‘KENTUCKY’ which
word is printed in virtually the same type font.”
Registrant’s counsel went on to request that applicant
“make sufficient changes to its mark and overall package
Ser No. 75/284,502
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design, including its color scheme, so that it is
distinguishable from our company’s.”
As a result, applicant changed its mark to that set
forth at the outset of this decision. The Examining
Attorney determined that the changes in the mark did not
result in substitution of a materially different mark and
approved the amendment.3 Nonetheless, the Examining
Attorney maintained the refusal of registration, arguing
that KENTUCKY is the dominant term in each mark,
notwithstanding that applicant has disclaimed it, and that
the respective horse designs yield similar impressions.
Thus, the Examining Attorney concludes that “applicant has
appropriated two significant portions of the registrant’s
mark, the geographic term ‘KENTUCKY’ and the image of the
horse, and merely added highly descriptive wording to the
beginning and end, such that the commercial impressions of
the marks are so similar that purchasers are likely to
believe that similar goods with these marks emanate from a
common source.”

3 Though the mark was changed, applicant and the Examining
Attorney did not agree to delete the “lining and stippling”
statement previously entered in regard to the original version of
the mark. It is, however, inappropriate to print such a
statement on any registration that may issue, in view of the
amendment of the mark. Accordingly, the statement shall be
deleted from the application.
Ser No. 75/284,502
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Applicant “does not concede that its mark ever created
the same overall impression” as registrant’s and argues,
“the divide is now even wider” since applicant changed its
mark. Applicant argues that its design “features a
rightward-facing, young, blond, free-spirited, wild
thoroughbred about to leap off the cigarette package itself
into the presence of the smoker. This thoroughbred is
alive and vigorous. Registrant’s mark has a totally
different appeal. Their horse is not real, but rather a
…leftward-facing statue attached to a weathervane, much
like a carousel horse is attached to a carousel. …poles
attach this statue to a …shield, which contains the words
‘Kentucky Club Continental Blend’.” Applicant concludes
that its mark appeals to “a cigarette smoker’s desire for
freedom” while registrant’s mark appeals to “a pipe or
cigar smoker’s desire to be an aristocratic ‘club’ member.”
Applicant also argues that it did not, contrary to the
Examining Attorney’s characterization, appropriate the
dominant elements of registrant’s mark. Instead, applicant
contends, any combination of an image of a horse and the
word Kentucky is quite natural, in view of the state’s
strong identification with racing horses. In addition,
applicant argues that Kentucky is home to half the nation’s
tobacco farms and there is, therefore, nothing arbitrary
Ser No. 75/284,502
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about using the name Kentucky for tobacco products. Thus,
applicant concludes neither applicant’s own mark nor
registrant’s mark is particularly strong or entitled to a
broad scope of protection.4
Applicant also argues that its goods are “upscale, all
natural cigarettes,” expensive and will be purchased by
consumers exercising care and attention.
Finally, applicant argues that it negotiated changes
in its mark and package design with registrant and “has
gone to great lengths to address the concerns of the
registrant and registrant is no longer opposed to
applicant’s mark.” Of record is a second letter to

4 Applicant’s references to the renown of Kentucky’s thoroughbred
and tobacco industries are set forth in its reply brief and are
supported by citations to Internet web sites, some of which are
on-line dictionaries. Applicant did not, however, submit
printouts from any of these sites. These contributions to the
record were improperly offered and untimely, and have not been
considered. See Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB
1998), in regard to the form of the proffer; see In re Total
Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) and Trademark Rule
2.142(d), in regard to the untimeliness of the proffer.
Notwithstanding our refusal to consider this material, we take
judicial notice of the following “hard-copy” dictionary listings:

Kentucky …2. an east central state of U.S.A.,… Chief Products:
Tobacco, corn, wheat; thoroughbred horses, cattle, hogs….
Merriam-Webster’s Geographical Dictionary 583 (3rd ed. 1997).

Kentucky, state …SE central U.S. …The state is noted for the
distilling of Bourbon whiskey…and for the breeding of
thoroughbred racehorses. In 1990 the state, esp. in W, N, and
central Ky., was also the 2d-largest U.S. grower of tobacco….
Tobacco has long been the state’s chief crop, and it is also the
chief farm prod., followed by cattle, horses, and dairy prods.
The Columbia Gazetteer of North America 506-07 (2000).
Ser No. 75/284,502
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applicant’s counsel from registrant’s general counsel,
which states, in part:
We have reviewed the new package design for Red
Hawk Tobacco’s Kentucky Blondes cigarettes. We
appreciate the changes which your client made to
their package design.
While we are not sure if the changes made will
be sufficient, we are willing to abide by the
determination of the Trademark Office on the new
design. Should this new design be acceptable to
the Trademark Office, we do not intend to oppose
Red Hawk’s registration of the new design.

Applicant contends that the Examining Attorney should
have accepted this letter as manifestation of registrant’s
consent to applicant’s registration of its amended mark.
We agree with applicant that the overall commercial
impressions of the respective marks are different.
Visually, they are similar only insofar as each employs a
horse design and the word KENTUCKY. The horses, however,
look different, and we agree with applicant that
applicant’s appears as an illustration of a “live” horse
while registrant’s appears as a representation of a horse
as it might be presented on a carousel or weathervane, or
perhaps even a crest or shield.5 Given the association of
thoroughbred horses with the state of Kentucky, adoption of

5 Though we find the respective horse images different, we have
not based this conclusion in any way on applicant’s argument that
the respective horses have different coloring. The Examining
Attorney is entirely correct that neither mark is restricted to
particular colors.
Ser No. 75/284,502
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the image of a horse for use in connection with the word
KENTUCKY is not particularly arbitrary. Under such
circumstances, one party’s adoption of a horse design
should not yield it a monopoly and preclude others, even
when products are related, from adopting dissimilar horse
designs. Other visual differences between the marks are
the particular fonts used for the words and the different
carriers or geometric elements framing these words.
In regard to the sounds of the marks, because of the
dominance of words over designs when the question is how
marks will be articulated, we are faced with a comparison
of KENTUCKY BLONDES and KENTUCKY CLUB CONTINENTAL BLEND.6
Apart from the fact that each of these phrases begins with
the word KENTUCKY, they are utterly dissimilar. We are not
persuaded otherwise by the Examining Attorney’s argument
that BLONDES and BLEND are phonetically similar. If
consumers would tend to abbreviate registrant’s mark when
calling for its goods, we believe they would tend to call
for KENTUCKY CLUB smoking tobacco, not KENTUCKY BLEND
smoking tobacco.

6 Though the phrase ALL NATURAL CIGARETTES appears in the
composite mark applicant seeks to register, this wording is
generic for applicant’s goods, could just as readily have been
deleted from the drawing as disclaimed, and would not be
perceived as part of the mark because they are devoid of source-
indicating significance.

Ser No. 75/284,502
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As to the connotations of the marks, applicant
contends that its composite mark creates a “triple entendre
referring to blond horses, blond women, and blond tobacco7,”
and that this is distinctly different than the connotation
of an aristocratic club engendered by registrant’s mark.
The Examining Attorney, in contrast, contends that
consumers would not view KENTUCKY BLONDES as creating even
a double entendre. We need not determine precisely how
many ideas the words in applicant’s mark would conjure up
for a consumer before we can conclude that any possible
connotation would be different than that of registrant’s
mark, which, we agree, would be viewed as evocative of a
club of some kind.
In short, we find the composite marks dissimilar as to
the traditional three factors of sight, sound and meaning
and on this basis alone find no likelihood of confusion.
Moreover, if the duPont factors did not favor applicant and
were equally weighted on the issue of likelihood of
confusion, we would, in this case, find the consent to
registration provided by registrant sufficient to tip the

7 Applicant notes, in particular, “Kentucky is commonly
associated with horses, like the blond horse featured on
[applicant’s] package. Blond is also a word used to identify
fair-haired individuals, including Kentucky’s former governor,
Martha Layne Collins and other Kentucky fair-haired women. [And
applicant’s cigarettes] contain Virginia blonde tobacco.”
Ser No. 75/284,502
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balance in favor of a finding of no likelihood of confusion
and publication of applicant’s mark for opposition.
The Examining Attorney argues that a bilateral
agreement spelling out particular steps that applicant and
registrant would take to avoid confusion of consumers would
be a better form of consent. We do not disagree, however,
the Examining Attorney conceded at the oral hearing that
the second letter from registrant’s general counsel could
be considered consent to registration and that registrant
probably would not oppose applicant’s application. As the
Examining Attorney acknowledged in briefing this appeal,
our reviewing court has clearly stated, in numerous cases,
that the considered opinions of parties as to the
likelihood of confusion in the marketplace is a significant
factor to be considered in the duPont analysis, and we see
no reason to protect registrant from the consequences of
what the Examining Attorney views as an unwise consent to
registration of applicant’s mark.
Decision: The refusal of registration is reversed.