Spirits of the USA, LLC

Trademark Trial and Appeal Board

Apr 21, 2010

No. 77518698 (T.T.A.B. Apr. 21, 2010)

Mailed:
April 21, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spirits of the USA, LLC
________

Serial No. 77518698
_______

Mark L. Siegel of Weatherly Kerven & Siegel LLC for Spirits
of the USA, LLC.

Saima Makhdoom, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Spirits of the USA, LLC filed an intent-to-use
application for the mark RUNNER, in standard character
form, for goods ultimately identified as “caffeinated
energy drinks, excluding sports drinks,” in Class 32.
Registration has been refused under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
“caffeinated energy drinks, excluding sports drinks,” so
resembles the mark RUNNER, in standard character form,
registered on the Supplemental Register for “protein based,
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77518698
2
nutrient-dense snack bars,” in Class 291 and “nutrition
energy bars for use a meal substitute; vitamin and mineral
formed and packaged as bars; and meal replacement bars,” in
Class 52 (hereinafter referred to as “nutritional snack
bars”) as to be likely to cause confusion. The
registrations are owned by the same entity.
Our determination of likelihood of confusion 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. 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are identical and applicant does not argue
otherwise. Normally, where the applicant's mark is

1 Registration No. 3443148, issued June 3, 2008.
2 Registration No. 3443160, issued June 3, 2008.
Serial No. 77518698
3
identical to the registrant's mark, as it is in this case,
there need be only a viable relationship between the
respective goods or services in order to find that a
likelihood of confusion exists. In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001).3
B. The similarity or dissimilarity and nature of the
goods, channels of trade, and classes of consumers.

Applicant’s original identification was “energy
drinks.” In an effort to avoid the likelihood of confusion
refusal, applicant amended the identification to
“caffeinated energy drinks, excluding sports drinks.”
Nonetheless, the examining attorney persisted in the
refusal of registration under Section 2(d). At first
blush, “caffeinated energy drinks, excluding sports drinks”
is nonsensical because energy drinks and sports drinks
appear to be essentially the same. Accordingly, we must
look to the evidence of record to determine the meaning of
applicant’s identification of goods. In re Trackmobile,
Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (“when the
description of goods for a cited registration is somewhat

3 Although the cited mark is registered on the Supplemental
Register, there is no reason to apply a lesser standard for the
likelihood of confusion analysis. Nevertheless, the
descriptiveness of the cited mark may influence the conclusion
that confusion is likely or unlikely. In re Southern Belle
Frozen Foods Inc., 48 USPQ2d 1849, 1850 n. 2 (TTAB 1998). See
the discussion infra.
Serial No. 77518698
4
unclear, as is the case herein, it is improper to simply
consider that description in a vacuum and attach all
possible interpretations to it when the applicant has
presented extrinsic evidence showing that the description
of goods has a specific meaning to members of the trade”).
An article in About.com, Alternative Medicine: Energy
Drinks (June 6, 2006) explains that an energy drink is a
stimulant and a sports drink is designed for hydration in
connection with exercise.4
Most energy drinks are carbonated
drinks that contain large amounts of
caffeine and sugar with additional
ingredients such as B vitamins, amino
acids (e.g. taurine), and herbal
stimulants such as guarana.

* * *

Energy drinks are marketed … as a
stimulant.

* * *

Energy drinks should not be consumed
during exercise.

Energy drinks should not be confused
with sports drinks such as Gatorade,
which are consumed to help people stay
hydrated during exercise. Sports
drinks also provide carbohydrates in
the form of sugar and electrolytes that
may be lost through perspiration.

4 Applicant’s February 19. 2009 Response.
Serial No. 77518698
5
However, applicant ignores that distinction as
illustrated by its website promoting its RUNNER energy
drink. Applicant’s use of the advertising line “When you
don’t want to get caught” engenders the commercial
impression that applicant’s product is something the
customer should drink to improve running performance.

This raises the question as to whether consumers are
aware of the distinction between energy drinks and sports
Serial No. 77518698
6
drinks.5 In this regard, we note that the evidence listed
below contradicts the seemingly straight forward
explanation in the About.com website.
1. Fueling the Runner: Energy Drinks: Do They
Really Equal More Energy? an article in the Running Times
website (runningtimes.com).6 This story analyzes the
effectiveness of energy drinks during exercise, thus,
indicating that runners and others consume energy drinks
before and during exercise.
2. A chatroom discussion regarding whether it is
unhealthy to have an energy drink before running. Yahoo!
Answers website (yahoo.com). The premise of the discussion
is that runners consume energy drinks before running.7
3. Stay hydrated and fueled for the short and long
run, an article in the Trail Runner website
(trailrunnermag.com) (January 2006), discusses proper
hydration and fueling for running.8 In the article, the

5 We also note that the story identified above in About.com
warned that “[e]nergy drinks should not be mixed with alcohol”
because energy drinks reduce the depressant effects of alcohol
and enhance the “‘feel good’ buzz,” thereby encouraging people to
consume larger amounts of alcohol. Nevertheless, applicant, a
manufacturer of a full line of spirits, encourages consumers to
mix its energy drinks and spirits as demonstrated by the recipe
featured in its website.
6 March 13, 2009 Office Action.
7 Id.
8 Id.
Serial No. 77518698
7
author uses the terms “energy drinks” and “sports drinks”
interchangeably.
4. In the BodyConcept.com website there is a section
for product reviews.9 The review for XENERGY energy drink
states, “I would drink just one can and have enough energy
to last the whole day of working out.” At least this one
customer uses energy drinks for athletics.
5. The “Energy Drink” entry in Wikipedia provides
the following observations:10
Energy drinks are soft drinks
advertised as providing energy to
improve physical activity of the
drinker, as compared to a typical
drinker. … these drinks are designed
to increase a user’s mental alertness
and physical performance by the
addition of caffeine, vitamins and
herbal supplements which may interact
to provide a stimulant effect over and
above that obtained from caffeine
alone.

* * *

During repeated cycling tests in young
healthy adults an energy drink
significantly increased upper body
muscle endurance.

* * *

The first drink marketed as being
designed to improve the performance of
athletes and sports stars arrived in

9 Id. The website also lists sports drinks and energy drinks as
separate product categories.
10 Id.
Serial No. 77518698
8
the sixties. It was invented for the
football team at the University of
Florida, known as the Gators – hence
its name, Gatorade. Designed to aid
hydration and lengthen performance
levels, it claimed that its ingredients
were formulated for just such things.

Wikipedia treats sports drinks as a type of energy drink.
6. Q+A: Why should I bother with energy drinks? an
article in the nutrition section of the Runner’s World
website (runnersworld.com).11 The exact question posed to
the Runner’s World expert was “Why should I bother with
energy drinks? I know that I need to keep hydrated during
training and racing, but isn’t water good enough?” The
answer discussed the role of energy drinks in maintaining
proper hydration in connection with rigorous workouts.
7. Energy Drinks and Food Bars: Power or Hype? is
an article in the MyStudentHealthZone webpage (March 2006)
and TeensHealth website (September 2008) both in
kidshealth.org.12 The author reports the following:
Energy drinks and nutrition bars often
make big promises. Some say they’ll
increase energy and alertness, others
offer extra nutrition and some even
claim to boost your athletic
performance or powers of concentration.

* * *

11 Id.
12 March 13, 2009 and May 16, 2009 Office Actions.
Serial No. 77518698
9
Likewise, some of the sports or energy
drinks on the market today contain some
vitamins and minerals.

* * *

Did you know that some energy bars and
drinks contain hundreds of calories?
That may be OK for athletes who burn
lots of calories in high-intensity
activities, like competitive cycling.
But for many teens the extra sugar and
calories just contribute to weight
gain, not to mention tooth decay.

* * *

Although lots of energy drinks and
nutrition bars have some vitamins and
minerals added, they can’t give you all
the different nutrients your body needs
to grow, develop, play sports, and
handle all the other stuff on you
schedule.

The author of this article treats sports drinks as a type
of energy drink.
8. The GNC website (gnc.com) sells energy drinks and
sports drinks together under the heading
“energy/endurance.”13
9. The advertisement for ROCKSTAR triple strength
energy drink featured in the WALGREEN’S website

13 Id.
Serial No. 77518698
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(walgreens.com) describes the product with adjectives
associated with athletics.14
Description
· Bigger.
· Better.
· Faster.
· Stronger.
· Rockstar is scientifically formulated to
provide an incredible energy boost for those
who lead active and exhausting lifestyles
from athletes to rock star.

Based on the foregoing, we find that the distinction,
if any, between energy drinks and sports drinks is
illusory. Even assuming arguendo that there is a
distinction between energy drinks and sports drinks, the
exclusion of sports drinks in applicant’s identification of
goods does not affect our decision because we base our
decision on likelihood of confusion between the marks used
on nutritional snack bars and energy drinks.
It is not necessary that the goods identified in an
application and the cited registrations 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 are such that they

14 Id.
Serial No. 77518698
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would or could, because of the similarity of the marks,
give rise to the mistaken belief that they originate form
the same producer. On-Line Careline Inc. v. America Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000);
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). In this regard, energy drinks and
nutritional snack bars both provide the user with energy,
albeit, in different ways.
Energy drinks thus enable the body to
burn fuel faster than ordinarily
possible, but once the fuel is burned
up, the body effectively “runs out of
gas” by crashing. Energy bars provide
a massive amount of fuel for the body
but do not induce metabolic stimulation
to aid in the processing of that fuel.15

To show that the energy drinks and nutritional snack
bars are related, the Examining Attorney submitted five
third-party registrations listing both energy drinks and
nutritional snack bars in the description of goods. 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 are of a type which
may emanate from a single source. In re Albert Trostel &

15 Wikipedia, “Energy bar” attached to the March 13, 2009 Office
Action.
Serial No. 77518698
12
Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).16
Energy Drinks and Food Bars: Power or Hype?
referenced above discusses the efficacy of energy drinks
and nutrition bars for increasing energy and concentration.
The article notes how students use nutrition bars and
energy drinks to increase energy and alertness and warns
that “[i]f energy bars and drinks are becoming their own
food group in your diet, remember – ‘all things in
moderation.’”
Also, as shown below, the GNC website (GNC.com)
advertises the sale of energy drinks and nutritional snack
bars together.
EAT, DRINK AND BE ENERGIZED
Check out delicious, nutritious bars
and drinks that keep you going.

While the BodyConcept.com and Walgreens websites do
not advertise energy drinks and nutritional snack bars
together, the online retailers sell both types of products,
albeit, under different marks on the same webpage.

16 The Examining Attorney submitted three additional registrations
based on Sections 44 or 66 of the Trademark Act. These
registrations have little, if any, probative value because they
are not based on use in commerce. In re Mucky Duck Mustard Co., 6
USPQ2d at 1470 n.6
Serial No. 77518698
13
Based on the evidence as a whole, we find that energy
drinks and nutritional snack bars are commercially related
products that are sold in the same channels of trade to the
same classes of consumers. The evidence shows that
consumers purchase nutritional snack bars and energy drinks
for an energy boost and that these products are advertised
together.
Applicant argues that the nutritional snack bars
listed in the cited registrations are sold to runners and
other athletes while its energy drinks are “intended to be
used as mixers for alcoholic beverages.”17 This argument is
untenable because the identifications in the cited
registrations are not limited with respect to channels of
trade or classes of consumers. Accordingly, we must
presume that that registrant’s nutritional snack bars are
sold in all channels of trade and to all classes of
consumers normal for those products. In re Southern Belle
Frozen Foods, Inc., 48 USPQ2d at 1850; In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). Likewise, applicant’s
identification of goods is not restricted. Moreover,
because the evidence shows that energy drinks are used by
athletes, purchasers and potential purchasers of

17 Applicant’s Brief, p. 4.
Serial No. 77518698
14
registrant’s nutritional snack bars may encounter
applicant’s energy drinks and vice versa when seeking a
product to provide an energy boost.
C. The conditions under which and buyers to whom sales
are made (i.e., “impulse” vs. careful, sophisticated
purchasing).

As indicated above, there is no limitation on the
“energy drinks” or “nutritional snack bars” listed in
either applicant’s or registrant’s identification of goods.
Thus, we must assume that the products include those that
are relatively inexpensive and bought on impulse. In fact,
the registrant’s nutritional snack bars range in price from
$14.16 ($1.18 each) to $16.22 ($1.35 each) for a box of
twelve.18 Energy drinks are also inexpensive. GNC sells a
six-pack of 5-HOUR ENERGY for $17 and a case of ROCKSTAR
ENERGY for $48.19 WALGREENS sells individual cans of
ROCKSTAR for $2.99.20
F. Balancing the factors.
Applicant argues that because the cited registrations
are descriptive, as evidenced by their registration on the
Supplemental Register, the registered mark is entitled to
only a narrow scope of protection.21 However, the general

18 February 18, 2009 response.
19 May 16, 2009 Office Action.
20 Id.
21 Applicant’s Brief, p. 3.
Serial No. 77518698
15
public is unaware of the register on which a mark is
registered. As stated by the predecessor of our primary
reviewing court,
That the decision respecting likelihood
of confusion is made in the PTO by
comparing an applicant’s mark and the
description of his goods with the
registered marks on file in the PTO,
and the goods described in the
registration of those marks, should not
lead to the notion that the locus of
potential confusion is in the files of
the PTO. The confusion sought to be
prevented by the statute is not that of
examiners, lawyers, board members, or
judges. Confusion is likely, if at
all, only in the marketplace, where
marks are used. The public is both
unaware of, and distinctly
disinterested in, where a mark is
registered on either register.

In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA
1978). Likewise, the relevant public is not concerned with
the placement of RUNNER on the spectrum of marks (e.g.,
fanciful, arbitrary, etc.).
In this case, we have identical marks identifying
commercially related products sold in the same channels of
trade to the same classes of consumers. Under these
circumstances, we find that the use of the mark RUNNER in
connection with “caffeinated energy drinks, excluding
sports drinks” is likely to cause confusion with the mark
RUNNER for nutritional snack bars.
Serial No. 77518698
16
Decision: The refusal to register in view of both the
cited registrations is affirmed.