Thomas Tan

Trademark Trial and Appeal Board

Sep 30, 2015

No. 86274518 (T.T.A.B. Sep. 30, 2015)

This Opinion is Not a
Precedent of the TTAB
Mailed: September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In Re Tan
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Serial No. 86274518
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Gene Bolmarcich of the Law Office of Gene Bolmarcich,
for Thomas Tan.

Linda Orndorff, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Bucher, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Thomas Tan (“Applicant”) seeks registration of the mark shown below

Serial No. 86274518
2
(with the wording “Hawaii Volcanic Tea” disclaimed) for “tea.”1 The Examining
Attorney refused registration under Section 2(d) of the Act on the ground that
Applicant’s mark so resembles the mark shown below

(with the word “Hawai’i” disclaimed) for various types of beverages, some flavored
with tea,2 that use of Applicant’s mark in connection with Applicant’s goods is likely
to cause confusion or mistake or to deceive. After the refusal became final,
Applicant appealed, the Examining Attorney requested and was granted a remand

1 Application Serial No. 86274518, filed May 7, 2014 originally based on use but later
amended to allege a bona fide intention to use the mark in commerce as the filing basis
under Section 1(b) of the Trademark Act. The application includes this description of the
mark: “The mark consists of the wording ‘HAWAII VOLCANIC TEA’ at the top of the circle
design in brown. The Chinese characters are on the lower right side of the circle design also
in brown. There is a tan circle design with a pink orchid with a yellow stamen with green
leaves under a two tone green volcano design with purple lava coming out. The white
background represents transparency and does not form part of the mark.” The application
also includes this transliteration statement: “The non-Latin characters in the mark
transliterate to Xiaweiyi Huoshan Cha and this means Hawaii Volcanic Tea in English.” In
addition to HAWAII VOLCANIC TEA, Applicant disclaimed “the non-Latin characters
which transliterate to ‘XIAWEIYI HUOSHAN CHA.’”
2 Registration No. 4361043, issued July 2, 2013. The registration includes this description
of the mark: “The mark consists of the words ‘HAWAI'I VOLCANIC’ in a stylized font. The
word ‘VOLCANIC’ is presented below the word ‘HAWAI'I’. Above the word ‘HAWAI'I’ is the
image of a drop of water. Presented within the drop of water on the bottom portion is a
wave. Above the wave is the image of a smoking volcano.”
Serial No. 86274518
3
to require a disclaimer of the non-Latin characters in Applicant’s mark and
Applicant and the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of 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. See 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.”).
Turning first to the goods, Applicant intends to offer “Tea,” which is commonly
used in beverages. Office Action of August 29, 2014 (printout from
“choiceorganicteas.com”). Registrant’s goods are beverages, some of which are
flavored with tea, as set forth in the cited registration’s identification of goods and
below, with the tea-flavored beverages appearing in bold:
Aerated mineral waters; Aerated water; Aerated water;
Bottled artesian water; Carbonated waters; Coconut
water; Coffee-flavored soft drink; Drinking water with
vitamins; Energy drinks; Flavored bottled water;
Flavored waters; Fruit drinks; Fruit drinks and fruit
juices; Fruit drinks and juices; Fruit flavored drinks;
Fruit flavored soft drinks; Fruit-based soft drinks
flavored with tea; Guarana drinks; Isotonic beverages;
Isotonic drinks; Isotonic non-alcoholic drinks;
Serial No. 86274518
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Magnetically treated water for human consumption and
not for medical purposes; Mineral and aerated water;
Mineral and aerated waters; Mineral and carbonated
waters; Non-alcoholic beverages with tea flavor;
Powders used in the preparation of isotonic sports drinks
and sports beverages; Purified bottled drinking water;
Quinine water; Scented water for making beverages;
Seltzer water; Soda water; Soft drinks; Soft drinks
flavored with tea; Soft drinks, namely, caffeinated and
non-caffeinated soft drinks; Sparkling water; Sports
drinks containing electrolytes; Spring water; Still water;
Table water

While Applicant argued during prosecution that its goods “comprise tea, not
beverages,” the evidence reveals that tea describes both a leaf and a beverage made
from the leaf. Office Action of April 9, 2015 (printouts from “snapple.com” and
“starbucks.com”); Office Action of August 29, 2014 (printout from
“choiceorganicteas.com”). Consumers familiar with Registrant’s HAWAI’I
VOLCANIC tea-flavored beverages may assume that Applicant’s HAWAII
VOLCANIC TEA comes from the same source.
Furthermore, the Examining Attorney has introduced evidence that tea and the
types of beverages identified in the cited registration are offered by the same
sources under the same mark, further supporting the finding of a relationship
between the goods. Specifically, the Examining Attorney has made of record
registrations which establish that the same marks have been registered to different
owners for both Applicant’s and Registrant’s goods:
HEALTH MASTER & Design (Reg. No. 4492135) is
registered for “tea” on the one hand and “fruit drinks and
fruit juices” on the other.

Serial No. 86274518
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NICE! in standard characters (Reg. No. 4565372) is
registered for “iced tea” on the one hand and “”flavored
sparkling water” and “fruit drinks” on the other.

GOYALICIOUS in standard characters (Reg. No.
4649967) is registered for “tea” on the one hand and
“bottled water,” “coconut water,” “fruit drinks and fruit
juices,” “fruit-flavored beverages,” “mineral and aerated
waters” and “soft drinks” on the other.

CALIFIA FARMS & Design (Reg. No. 4598774) is
registered for “tea” on the one hand and “coconut water,”
“flavored waters,” “fruit beverages,” “fruit drinks” and
“fruit juices” on the other.

LOVE NATURAL FOOD COMPANY & Design (Reg. No.
4604413) is registered for “tea, coffee, cocoa” on the one
hand and “mineral and aerated waters and other non-
alcoholic drinks, namely, fruit juice beverages … soft
drinks … fruit drinks and fruit juices” on the other.

NATURAL DIRECTIONS in standard characters (Reg.
No. 4628001) is registered for “tea” on the one hand and
“mineral water,” “non-alcoholic beverages containing fruit
juices,” “coconut water” and “fruit juices” on the other.

Office Action of December 23, 2014. “Third-party registrations which cover a
number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” See, In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Furthermore, the Examining
Attorney introduced evidence that tea and fruit juices are sold under the same
marks:
Serial No. 86274518
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Office Action of April 9, 2015 (printouts from “snapple.com” and “starbucks.com”).
As for the channels of trade, because Applicant’s and Registrant’s identifications
contain no limitations, the goods are presumed to move in all normal channels of
Serial No. 86274518
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trade therefor and to be available to all classes of consumers. Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed.
Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be
‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, the
evidence establishes that fruit juices and soft drinks such as those Registrant offers
travel in the same channels of trade as tea. Office Action of April 9, 2015 (printouts
from “snapple.com” and “starbucks.com”).
In short, the goods are related and the channels of trade are similar. These
factors weigh in favor of a finding of likelihood of confusion.
Turning 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). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Here, while the marks look different because they have different and fairly
distinctive designs, they are nevertheless more similar than dissimilar when
considered as a whole. Indeed, because they both include HAWAII (or “Hawai’i”)
VOLCANIC, they sound very similar and convey similar meanings. Where, as here,
Serial No. 86274518
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a mark is comprised of a literal element and a design, the literal element is
normally accorded greater weight, because consumers are likely to remember and
use the words to request the goods or services. In re Viterra Inc., 671 F.2d 1358, 101
USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark
likely will be the dominant portion”); see also, In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (cited by Applicant) (holding that “if one of the
marks comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services” and “because applicant’s mark shares with registrant’s mark that element
responsible for creating its overall commercial impression, the marks are
confusingly similar”). While Applicant’s mark also includes the descriptive word
TEA, that is not enough to distinguish the marks, especially because Registrant
offers tea-flavored beverages.
While Applicant is correct that the literal portions of its mark and Registrant’s
mark are descriptive, we may not ignore these portions of the marks, especially
here, where they are the only English-language literal elements in Applicant’s and
Registrant’s marks. In fact, as stated in In re Viterra, “we previously have found
that the dominant portion of a composite word and design mark is the literal
portion, even where the literal portion has been disclaimed.” In re Viterra, 101
USPQ2d at 1912 (citations omitted). See also, In re Shell Oil Co., 992 F.2d 11204, 26
USPQ2d 1687 (Fed. Cir. 1993) (“Shell’s argument that the only consideration is the
‘design form’ of the words ‘Right-A-Way’, omitting the words ‘right-a-way’ because
Serial No. 86274518
9
they were disclaimed, was correctly rejected by the Board.”); Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
With respect to the design elements of Applicant’s mark and the cited mark,
they are more similar than Applicant indicates. In fact, both designs feature
volcanos, each of which, as indicated in the description of Registrant’s mark, are
“smoking,” or spewing lava. This highlights the identical term VOLCANIC which
the marks share.
In short, because both marks include the essentially identical literal element
HAWAII VOLCANIC,3 as well as designs featuring smoking volcanos, they are
more similar than different. In fact, the marks’ similarities in sound and meaning
outweigh their differences in appearance, and thus this factor also weighs in favor
of a finding of likelihood of confusion.
Conclusion
Because Applicant’s and Registrant’s marks are more similar than dissimilar,
and both are used or intended to be used for tea or tea-flavored products which may
be offered in the same channels of trade, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

3 This case is therefore readily distinguishable from In re Electrolyte Laboratories Inc.¸929
F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990) and the unpublished cases upon which
Applicant relies at pages 5-7 of its Appeal Brief. In those cases, the literal elements were
not nearly so close as the literal elements of Applicant’s and Registrant’s marks in this
case. Here, Applicant has taken what is essentially the entirety of the literal portion of
Registrant’s mark, and added its own version of a smoking volcano design. The cases which
are more analogous to this one are In re Appetito Provisions and In re Dakin’s Miniatures
Inc., 59 USPQ2d 1593 (TTAB 1999), both of which Applicant cites in its brief.