Teapresso Bar LLCv.Teaspressa, LLC

Trademark Trial and Appeal Board

Sep 11, 2020

94002890 (T.T.A.B. Sep. 11, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Teaspressa, LLC

v.

Teapresso Bar LLC
_____

Concurrent Use No. 94002890
_____

Mary L. Shapiro, Evoke Law, PC,
for Teaspressa LLC.
Michael J. Sullivan, Law Office of Michael J. Sullivan,
for Teapresso Bar LLC.
_____

Before Zervas, Heasley, and Johnson,
Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:
Teaspressa, LLC (“Applicant” or “Teaspressa”) seeks a concurrent use registration
on the Principal Register of the standard character mark TEASPRESSA for “retail
store services featuring brewed tea, unbrewed tea, and tea accessories; subscription
based order fulfillment services in the field of tea,” in International Class 35, and
“preparation of tea, coffee, and other coffee- and tea-based beverages; catering of
Concurrent Use No. 94002890
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drinks; providing information in the nature of recipes for drinks and cooking,” in
International Class 43.1 Registration is sought for the area comprising the entire
United States except for the state of Hawaii.
The application names Teapresso Bar LLC (“Teapresso Bar”) as an excepted user
and owner of application Serial No. 87330672 for the mark TEAPRESSO BAR as an
exception to Teaspressa LLC’s claim of exclusive use of the mark of application Serial
No. 87678894. Teapresso Bar LLC’s mark, TEAPRESSO BAR,2 is for “coffee and tea
bars” for the geographic area comprised of the state of Hawaii.
On April 24, 2020, Applicant filed an affidavit of its CEO, Allison DeVane, in
support of its concurrent use registration.3 A Settlement Agreement, a Stipulation of
Dismissal of a cancellation proceeding,4 and a Consent Agreement were attached as

1 Application Serial No. 87678894, filed Nov. 9, 2017, with a date of first use on Jun. 22, 2015
and first use in commerce on Oct. 12, 2015 for the services claimed in International Class 35,
and with a date of first use on Dec. 17, 2014 and first use in commerce on Feb. 11, 2015 for
the services claimed in International Class 43.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions,
and orders on appeal are to the Board’s TTABVUE docket system.
2 Application Serial No. 87330672, filed Feb. 9, 2017, with a claim of first use and first use in
commerce of Oct. 1, 2014.
3 4 TTABVUE 2-3.
4 Application Serial No. 87330672 for TEAPRESSO BAR was initially refused registration
based on a finding of a likelihood of confusion with Applicant’s registered mark,
TEASPRESSA (Reg. No. 5084642). Shortly thereafter, Teapresso Bar filed a petition to cancel
the TEASPRESSA registration, Cancellation No. 92067280. On January 10, 2018, the parties
filed a Stipulation of Dismissal with prejudice of the cancellation proceeding and executed a
Consent Agreement.
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exhibits.5 On May 12, 2020, the Board suspended proceedings pending consideration
of the parties’ Settlement Agreement.6
The Settlement Agreement between the parties provides for concurrent use of
their respective marks within specified geographic territories, in accordance with the
following relevant terms:
1. Teaspressa agrees not to challenge and consents to Teapresso Bar’s right to
operate retail establishments using the mark TEAPRESSO BAR in the states of
Hawaii and Texas. If Teapresso Bar has not begun operating and has not entered into
contracts relating to the operation of a retail establishment within the state of Texas
within three (3) years of the date of this Agreement, Teapresso Bar’s rights to operate
in the State of Texas will be extinguished and Teaspressa shall assume the rights
granted by Teaspressa to Teapresso Bar to operate in the state of Texas. (paragraph
7 of the Settlement Agreement); and
2. Teapresso Bar agrees not to open any stores using a mark similar to
TEASPRESSA (including TEAPRESSO BAR) in any U.S. state or federal territory
apart from the states of Hawaii and Texas. This includes standalone locations and
store-within-a-store locations. (paragraph 8 of the Settlement Agreement).
Under Section 2(d) of the Trademark Act, a concurrent use registration may issue
only where it is determined “that confusion, mistake, or deception is not likely to

5 4 TTABVUE 5-20. The Stipulation of Dismissal and Consent Agreement only involved the
registration for the mark TEASPRESSA and the application to register the mark
TEAPRESSO BAR.
6 5 TTABVUE.
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result from the continued use by more than one person of the same or similar marks
under conditions and limitations as to the mode or place of use of the marks or the
goods on or in connection with which such marks are used.” 15 U.S.C. § 1052(d); see
Southwestern Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015).
In reviewing the terms of the Settlement Agreement, we find that confusion,
mistake, or deception is likely to result from the parties’ use of their respective marks
under its terms. Below, we address the areas of concern in the agreement.
Several paragraphs of the Settlement Agreement include the state of Texas as
part of the geographic territory restriction,7 but Texas is not mentioned in Applicant’s
territory restriction in the concurrent use application. For example, in paragraph 7
of the Settlement Agreement, Teapresso Bar’s right to use its mark is linked to
“operating” and entering into contracts “relating to the operation of a retail
establishment within the state of Texas within three (3) years of the date of this
Agreement,” ending on or about January 9, 2021. However, the concurrent use
application only lists the state of Hawaii as a geographic restriction for Applicant,
and Ms. DeVane’s affidavit in support of the concurrent use registration does not
mention anything about the state of Texas. Under the Trademark Act, every
application claiming concurrent use shall be verified by the applicant and not only
shall state exceptions to the claim of exclusive use made in the application, but also
shall specify the goods and area for which the applicant desires registration. 15 U.S.C.
§§ 1051(a)(3)(D)(i), (ii). In addition, the language of the contingency itself –

7 4 TTABVUE 8 ¶¶ 7, 8, 11; 4 TTABVUE 9 ¶¶ 12, 13.
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“operating” and “relating to the operation of a retail establishment” – is too vague to
support a concurrent use agreement designed to avoid the likelihood of consumer
confusion.
Also, the Settlement Agreement does not reflect that the parties have agreed that
their uses of their marks in their respective territories would not be likely to cause
confusion. Moreover, the agreement is silent as to what actions the parties will take
in the event there are instances of actual confusion.8
Generally, agreements reflecting the parties’ views on likelihood of confusion in
the marketplace “carry great weight” because the parties are in a much better
position to gauge real life marketplace conditions. See Bongrain Int’l (Am.) Corp. v.
Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987). However,
upon careful consideration of the Settlement Agreement between the parties, here,
the Board is not persuaded that the parties’ concurrent use of their respective marks
as set forth in the Settlement Agreement is not likely to cause confusion under
15 U.S.C. § 1052(d). See Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351, 352
(TTAB 1974) (mere naked agreement wherein parties have not delineated measures
taken to preclude likelihood of confusion is not persuasive).

8 We note that the Consent Agreement, 4 TTABVUE 17-20, contains sections discussing the
absence of confusion between the marks, further efforts to avoid confusion, and cooperation
in the event of actual confusion. However, as previously mentioned, the Consent Agreement
pertains to the TEAPRESSO BAR application and the TEASPRESSA registration. Moreover,
the Settlement Agreement states, “[i]f the Teapresso Bar Application becomes abandoned for
any reason and it is not successfully revived by Teapresso Bar, then (a) the Consent
Agreement … shall … become null and void without any further action by either Party.”
4 TTABVUE 7-8 ¶ 6. Teapresso Bar expressly abandoned Application Serial No. 87330672
on February 26, 2018, so the terms of the Consent Agreement are inapplicable here.
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Therefore, this concurrent use proceeding cannot be terminated based on the
parties’ Settlement Agreement.
The parties are allowed until 60 days from the mailing date of this order to submit
an amended concurrent use settlement agreement delineating the non-overlapping
geographic areas of use by the parties, and including terms evidencing how likelihood
of confusion is to be avoided as discussed above.
This proceeding shall otherwise remain suspended pending the filing of an
amended agreement or the expiration of the foregoing 60 day period. In the event
that the 60 day period passes without an acceptable concurrent use settlement
agreement being presented, proceedings shall be resumed.