Silver Creek Bottling Co.

Trademark Trial and Appeal Board

Dec 12, 2000

No. 75549508 (T.T.A.B. Dec. 12, 2000)

12/12/00
Paper No. 10
EWH/krd
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Silver Creek Bottling Co.
________
Serial No. 75/549,508
_______
Dennis A. Gross of Hill & Simpson for Silver Creek Bottling
Co.
Zhaleh Sybil Delaney, Trademark Examining Attorney, Law
Office 101 (Christopher Wells, Managing Attorney).
_______
Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Silver Creek Bottling Co. (applicant) seeks to
register GINSENG LIFT in the stylized form shown below for
a “bottled non-alcoholic beverage containing ginseng
extract and tea extract.” The intent-to-use application
was filed on September 8, 1998. The word “ginseng” is
disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/549,508
2
Citing Section 2(d) of the Trademark Act, the
examining attorney has refused registration on the basis
that applicant’s mark, if applied to applicant’s goods,
would be likely to cause confusion with the mark LEMON
LIFT, previously registered in the stylized from shown
below for “tea.” Registration No. 771,201. The word
“lemon” is disclaimed.
In addition, the examining attorney refused
registration on the basis that applicant’s description of
its goods –- bottled non-alcoholic beverage containing
ginseng extract and tea extract –- was indefinite.
Serial No. 75/549,508
3
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods and the
similarity of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Considering first the goods, we find that they are
only slightly related. It is very clear what registrant’s
goods are, namely, the common beverage tea. We simply do
not share the examining attorney’s totally unsupported
contention that registrant’s goods (tea) are broad enough
to include “tea extract” as well as “other non-alcoholic
tea-based or tealike beverages such as the applicant’s.”
(Examining attorney’s brief page 10). Tea does not
encompass, to use the examining attorney’s words, “tealike
beverages such as the applicant’s.” Tea certainly does not
encompass ginseng, which is defined as a medicinal
substance made from the root of the ginseng plant.
Webster’s New World Dictionary (2d ed. 1970). Indeed, the
examining attorney has essentially admitted that
applicant’s product is medicinal in nature when she
Serial No. 75/549,508
4
suggested that applicant adopt, as one possible
identification of its goods, the following: “bottled non-
alcoholic beverage containing ginseng extract and tea
extract for medicinal purposes.” (Emphasis added).
In short, we find that there is only a minimal
relationship between registrant’s goods and applicant’s
goods in that the former is tea and the latter contains,
among other ingredients, tea extract.
Turning to a consideration of the marks, we find that
in their entireties they are clearly different in terms of
visual appearance, pronunciation and connotation. In terms
of visual appearance, not only is the word GINSENG
distinctly different from the word LEMON, but in addition
both marks are depicted in distinctly different manners.
As for pronunciation, the words LEMON and GINSENG are
likewise distinctly different.
Finally, in terms of connotation, we find that the
marks are clearly different. When used in conjunction with
tea, registrant’s mark LEMON LIFT clearly suggests to
purchasers that the tea has lemon flavoring and that it
will serve, to use the words of the examining attorney, to
“create a lift or boost in energy.” (Examining attorney’s
brief page 7). On the other hand, the presence of the word
GINSENG in applicant’s mark causes consumers to view
Serial No. 75/549,508
5
applicant’s bottled non-alcoholic beverage as being
medicinal in nature, a point which the examining attorney
has essentially conceded. While the presence of the word
LIFT in applicant’s mark will most likely cause consumers
to view applicant’s medicinal beverage as likewise
providing a lift or boost in energy, said boost in energy
would come about as a result of the medicinal properties of
applicant’s goods.
In short, given the fact that registrant’s goods and
applicant’s goods are only slightly related and the
significant differences in the two marks, we find, based on
this record, that their contemporaneous use is not likely
to result in confusion.
Finally, as for the refusal to register on the basis
that applicant’s identification of its goods is indefinite,
we reverse. We are at a loss to understand why applicant’s
identification of goods (bottled non-alcoholic beverage
containing ginseng extract and tea extract) is indefinite,
and yet one of the other suggested identifications of goods
set forth in the examining attorney’s brief at page 12 is
virtually the same, namely, “bottled non-alcoholic soft
drinks containing tea extract and ginseng extract.”
Serial No. 75/549,508
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Decision: The refusal to register on both grounds is
reversed.
E. W. Hanak
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board