Yogi Bhajan Administrative Trustv.Ranbir Singh Bhai

Trademark Trial and Appeal Board

Feb 24, 2021

91233732 (T.T.A.B. Feb. 24, 2021)

Mailed: February 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Yogi Bhajan Administrative Trust
v.
Ranbir Singh Bhai
_____

Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733
_____

Aaron J. Moss, Elizabeth Sbardellati, and Vera Serova of Greenberg, Glusker, Fields,
Claman & Machtinger LLP for Yogi Bhajan Administrative Trust.

Surjit P. Soni and Michael Long of The Soni Law Firm for Ranbir Singh Bahi.
_____

Before Zervas, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Ranbir Singh Bhai (Applicant) seeks registration on the Principal Register for the
three marks listed below:
● YOGI COCONUT WATER, in standard character form, for “coconut water,” in
International Class 32;1

1 Serial No. 86963331, filed April 4, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), based on Applicant’s claim of first use of his mark anywhere and in commerce as
of March 26, 2016. Applicant disclaims the exclusive right to use “Coconut Water.”
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 2 -

● YOGI GINGER FIRE WATER, in standard character form, for “flavored bottle
water,” in International Class 32;2 and
● YOGI TURMERIC WATER, in standard character form, for “flavored bottle
water,” in International Class 32.3
Yogi Bhajan Administrative Trust (Opposer) opposes the registration of
Applicant’s marks.
1. Opposition No. 91233731 - YOGI COCONUT WATER
Opposer alleges Applicant’s mark so resembles Opposer’s registered marks YOGI
TEA, in typed drawing form, for “tea,” in International Class 30,4 and YOGI, in
standard character form, for “tea,” in International Class 30,5 as to be likely to cause

2 Serial No. 86963343 filed April 4, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce.
Applicant disclaims the exclusive right to use “Ginger” and “Water.”
3 Serial No. 86963337 filed April 4, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce.
Applicant disclaims the exclusive right to use “Turmeric Water.”
4 Registration No. 1980514 registered June 18, 1996; renewed. Opposer disclaimed the
exclusive right to use the word “Tea.” Opposer attached to the Notice of Opposition a copy of
the registration printed from the USPTO Trademark Status and Document Retrieval system
(TSDR) showing the current status of and title to the registration. Pursuant to Trademark
Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), the registration is received in evidence and made
part of the record.
5 Registration No. 3607292 registered April 14, 2009; Section 8 declaration accepted. Opposer
subsequently renewed the registration. Opposer attached to the Notice of Opposition a copy
of the registration printed from the USPTO Trademark Status and Document Retrieval
system (TSDR) showing the current status of and title to the registration. Pursuant to
Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), the registration is received in evidence
and made part of the record.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 3 -

confusion.6 Opposer and Bibiji Inderjit Kaur Puri (Bibiji) each own an undivided 50%
interest in the registrations.7 Applicant is Bibiji’s son.8
In addition, Opposer alleges that the application is void ab initio because
Applicant did not make bona fide use of the mark prior to the filing date of the
application9 and Applicant is not the owner of the mark he seeks to register.10
2. Opposition No. 91233732 – YOGI GINGER FIRE WATER – and
Opposition No. 91233733 – YOGI TURMERIC WATER

In addition to the likelihood of confusion claim discussed above, Opposer alleges
“Applicant now lacks, and lacked at the time of filing the Opposed Application a bona
fide intent to use the applied for mark in connection with the goods covered by the
Opposed Application”11 and Applicant is not the owner of the mark he seeks to
register.12
Applicant, in his Answers in all three oppositions, makes the following
admissions:13

6 Notice of Opposition ¶¶16-23 (1 TTABVUE 7-8).
7 Notice of Opposition ¶¶1 and 2 (1 TTABVUE 4); Applicant’s Answer ¶¶1 and 2 (13
TTABVUE 4).
We refer to Bibiji Inderjit Kaur Puri as Bibiji because that is how the parties refer to her.
8 Notice of Opposition ¶4 (1 TTABVUE 5); Applicant’s Answer ¶4 (13 TTABVUE 5).
9 Notice of Opposition ¶8 (1 TTABVUE 5).
10 Notice of Opposition ¶¶ 10-13 (1 TTABVUE 6).
11 Notices of Opposition ¶8 (1 TTABVUE 5).
12 Notices of Opposition ¶¶10-13 (1 TTABVUE 6).
13 We cite to Applicant’s Answer in Opposition No. 91233731 unless otherwise indicated.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 4 -

● Opposer and Bibiji each own an undivided 50% interest in the YOGI mark;14
● Opposer and Bibiji are co-owners of Opposer’s pleaded registrations;15
● Opposer and Bibiji, by and through their predecessors and licensees, have used
the YOGI marks in interstate commerce in connection with food and beverages
continuously since at least 1983;16
● Opposer and Bibiji have developed substantial goodwill in the YOGI marks
through their undivided interest in the marks that serve to distinguish their
undivided interest in the marks from the food and beverage products of others;17
● “Applicant does not own the YOGI marks himself given his status as licensee”;18
● Applicant “is aware that he is not an owner of the YOGI Marks, including the
mark in the Opposed Application, and is further aware that Opposer and Inderjit
Kaur Puri [Bibiji] are the only ‘person[s] [who] have the right to use’ the applied for
mark in commerce and that the applied for mark is likely to ‘to cause confusion or
mistake, or to deceive’ consumers into believing that it is related to Opposer’s YOGI
Marks when used in connection with the applied for goods”;19

14 Applicant’s Answer ¶1 (13 TTABVUE 4).
15 Applicant’s Answer ¶2 (13 TTABVUE 4).
16 Id.
17 Applicant’s Answer ¶3 (13 TTABVUE 4).
18 Applicant’s Answer ¶4 (13 TTABVUE 5).
19 Applicant’s Answer ¶13 (13 TTABVUE 7).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 5 -

● Applicant’s mark “so resembles the YOGI Marks to the extent it bears the YOGI
name”;20
● Applicant’s mark is similar in sound, appearance and meaning” to the marks in
Opposer’s [and Bibiji’s] pleaded registrations to the extent they all include the term
YOGI;21
● Applicant’s goods are similar and related to the goods in Opposer’s pleaded
registrations;22
● Applicant’s target customer base for its flavored bottled water “substantially
overlaps with Opposer’s customer base;23
● Applicant plans to use his mark in the same channels of trade in which Opposer
offers its products;24
● “[T]here are no restrictions in either Opposer’s registrations or Applicant’s
application as to the nature, type, channels of trade or classes of purchasers of
Applicant’s and Opposer’s respective goods to the extent that Bibiji and Opposer co-
own the YOGI Marks affecting such application here.”;25 and

20 Applicant’s Answer ¶16 (13 TTABVUE 7).
21 Applicant’s Answer ¶17 (13 TTABVUE 8).
22 Applicant’s Answer ¶18 (13 TTABVUE 8).
23 Applicant’s Answer ¶19 (13 TTABVUE 8).
24 Applicant’s Answer ¶20 (13 TTABVUE 8).
25 Applicant’s Answer ¶21 (13 TTABVUE 8).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 6 -

● “There is a presumption that both parties’ goods would travel in all normal
channels of trade to the same class of purchasers.”26
Applicant denies the remaining allegations of the Notices of Opposition. This
raises the question: what is left to deny that raises any triable issues? As best we
understand Applicant’s defense, Applicant believes he is entitled to use the marks
because he is acting with the authority of Bibiji, an owner of the undivided interest
in the YOGI marks.27 “Applicant believed he was acting with the authority to file with
ownership rights on behalf of Bibiji.”28 Accordingly,
Applicant prays that the opposed [applications] be issued
registration thereon to Bibiji Inderjit Kaur Puri and to
Opposer as co-owners of said Application[s], and that this
Notice of Opposition be denied as moot because one co-
owner cannot oust another co-owner nor its agent or
licensee acting for the benefit of the co-owner.29
In essence, Applicant concedes he filed the applications in his name when Opposer
and Bibiji should have filed them as co-owners, and therefore, Applicant requests the
USPTO issue the registrations in the name of Opposer and Bibiji.

26 Id.
27 Applicant’s Answer ¶10 (13 TTABVUE 6).
28 Applicant’s Answer ¶11 (13 TTABVUE 6).
29 Applicant’s Answer ¶24 (13 TTABVUE 9). Applicant inadvertently filed the Answer for
Opposition No. 91233732 as his Answer in Opposition 91233731. The difference between the
two oppositions is that in Opposition 91233731 is against an application based on use
whereas Opposition No. 91233732 is against an intent-to-use application. Thus, in Opposition
No. 91233731, Opposer alleges Applicant did not make bona fide use of the mark prior to
filing the application. In Opposition 91233732, Opposer alleges that Applicant did not have
a bona fide intent to use the mark in commerce. Because the parties litigated the proceedings
as if Applicant properly filed an Answer in Opposition No. 91233731, we find that Applicant
denied the allegation that he did not make a bona fide use of the mark YOGI COCONUT
WATER prior to the filing date of the application.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 7 -

Applicant asserted affirmative defenses that are not affirmative defenses but
rather amplifications of its denials. They give Opposer a more complete notice of
Applicant’s defenses.
The Board consolidated Opposition Nos. 91233732 and 91233733 in an order dated
October 17, 2017.30 Subsequently, in an order dated March 6, 2018, the Board
consolidated all three proceedings identifying Opposition No. 91233731 as the parent
case.31 All references will be to the record in Opposition No. 91233731 unless
otherwise indicated.
I. Preliminary Issue
Applicant, in his brief, asks us to consider his notice of reliance submitting
excerpts from its own discovery deposition and its own responses to Opposer’s request
for admissions the Board struck in its July 29, 2020 order.32
Pursuant to the Board’s September 20, 2019 trial order, Applicant’s trial period
closed February 3, 2020.33
On February 4, 2020, Applicant filed a notice of reliance with a “certificate of
electronic service” dated February 3, 2020.34

30 Opposition No. 91233732 (13 TTABVUE); Opposition No. 91233733 (11TTABVUE).
31 Opposition No. 91233731 (14 TTABVUE); Opposition No. 91233732 (18 TTABVUE);
Opposition No. 91233733 (15 TTABVUE).
32 54 TTABVUE.
33 31 TTABVUE.
34 42 TTABVUE. Applicant posted the portions of the notice of reliance designated
confidential at 43 TTABVUE.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 8 -

On March 9, 2020, Opposer filed a motion to strike Applicant’s notice of reliance,
inter alia, on the ground that Applicant did not comply with the procedural
requirements for introducing excerpts from its own discovery deposition and its own
responses to Opposer’s requests for admission. Opposer argues that Applicant failed
to explain why in fairness other parts of the deposition and admissions should be
considered so as to make not misleading what was offered by Opposer pursuant to
Trademark Rules 2.120(k)(4) and (5), 37 C.F.R. § 2.120(k)(4) and (5).35
Although Applicant failed to file a response to Opposer’s motion to strike,36 the
Board, in its July 29, 2020 order, did not consider Applicant’s failure as a concession
to the motion to strike.37 Nevertheless, the Board granted Opposer’s motion to strike
Applicant’s notice of reliance for the following reasons:
● Applicant’s notice of reliance was not timely.38
● Applicant failed to include a written explanation why he needed to rely on the
additional portions of his discovery deposition to make not misleading those portions
introduced by Opposer. The Board noted, “the remainder of the deposition may not
be offered merely for purposes of ‘completeness.’”39

35 44 TTABVUE.
36 Applicant filed several requests for extensions of time to respond.
37 54 TTABVUE 4.
38 54 TTABVUE 6.
39 54 TTABVUE 7.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 9 -

● Likewise, Applicant failed to explain why the Board should consider the
remainder of his responses to Opposer’s requests for admission to avoid an unfair
interpretation of the admissions offered by Opposer.40
● Finally, in accordance with the Board’s August 6, 2019 Order entering sanctions
against Applicant,41 the Board noted that Applicant may not rely on any documents
he failed produce prior to March 11, 2019 unless the documents were introduced by
Opposer.42
Applicant did not file a request for reconsideration. However, in his October 30,
2020 brief on the case, filed more than 90 days after the Board’s July 29, 2020 order
striking Applicant’s notice of reliance, Applicant argues that the Board should
consider his notice of reliance. In other words, Applicant requests the Board to
reconsider the July 29, 2020 order striking Applicant’s notice of reliance.43
Trademark Rule 2.127(b), 37 C.F.R. § 2.127(b), provides that any request for
reconsideration from a Board’s order must be filed within one month of the mailing
date of the order. Because Applicant did not file a request for reconsideration and
waited until its brief to challenge the propriety of the July 29, 2020 order, Applicant’s
challenge to the order is not timely. See Avedis Zildjian Co. v. D. H. Baldwin Co.,
181 USPQ 736, 736 (Comm’r 1974) (“The Board is not required, without a waiver of

40 54 TTABVUE 7.
41 26 TTABVUE 8-9.
42 54 TTABVUE 8.
43 Applicant’s Brief, pp. 1-3 (59 TTABVUE 6-8).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 10 -

the rule by the Commissioner or the Assistant Commissioner for Trademarks, to
consider a request for reconsideration received after the original 30-day period from
the date of the Board’s decision.”).
In addition, the Board’s order properly struck Applicant’s notice of reliance
because it was not timely filed even though Opposer did not raise timeliness as a
ground for objection. “A party may not take testimony or present evidence outside of
its assigned testimony period, except by stipulation of the parties approved by the
Board, or, on motion, by order of the Board.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 701 (2020) (quoting Trademark Rule 2.121(a),
27 C.F.R. § 2.121(a)). See also Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020
at *2 (TTAB 2020) (“a party may introduce testimony and evidence only during its
assigned testimony period.”); Baseball Am. Inc. v. Powerplay Sports, 71 USPQ2d
1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned
testimony period given no consideration); M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d
1070, 1072 (TTAB 1990) (untimely deposition stricken).
“Evidence not obtained and filed in compliance with these sections will not be
considered.” Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k). See also Maytag Co. v.
Luskin’s, Inc., 228 USPQ 747, 748 n.5 (TTAB 1986) (striking evidence not filed in
compliance with the rules); Binney & Smith Inc. v. Magic Marker Ind., Inc., 22 USPQ
1003, 1009 n.18 (TTAB 1984); Hydrotechnic Corp. v. Hydrotech Int’l, Inc., 196 USPQ
387, 391 (TTAB 1977) (striking incompetent, immaterial or irrelevant material
introduced in a testimony deposition even though counsel was not present to raise
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 11 -

objections); Chicken Delight Inc. v. Delight Wholesale Co., 193 USPQ 175, 177 (TTAB
1976) (Trademark Rule 2.123(k) provides that evidence not obtained and filed in
compliance with the Trademark Rules will not be considered).
We also note that Applicant’s reasoning for acceptance of his late-filed notice of
reliance is faulty. Trademark Rule 2.195, 37 C.F.R. § 2.195, provides,
The filing date of an electronic submission is the date the
Office receives the submission, based on Eastern Time,
regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia.
The TBMP § 109 further explains the process.
The cover sheet for correspondence transmitted
electronically through ESTTA is automatically affixed with
the date the Office receives the complete transmission,
including any required fee. Eastern Time controls the filing
date. Once a request is transmitted electronically, the
system immediately provides the sender with an email
acknowledgement of receipt.44
See also TBMP § 110 (“Although an ESTTA filing can be made from anywhere in the
world, Eastern Time controls the filing date, not the local date from where the filing
was made.”).
Assuming that Applicant, in good faith, filed its notice of reliance at 10:13 pm from
counsel’s office in Pasadena, California, on February 3, 2020,45 Applicant fails to
explain why it ignored the filing receipt stating the notice of reliance was filed

44 “The acronym ESTTA means the Electronic System for Trademark Trials and Appeals and,
as used in this part, includes all related electronic systems required to complete an electronic
submission through ESTTA.” Trademark Rule 2.2, 37 C.F.R. § 2.2.
45 Applicant’s Brief, p. 2 (59 TTABVUE 7).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 12 -

February 4, 2020 – one day late – and took no immediate action to inform the Board
of its late filing and seek to reopen its trial period.
The USPTO provides an ESTTA user manual available to users at
https://esta.uspto.gov. It advises users,
PLAN AHEAD. Because unexpected problems can occur,
you should keep filing deadlines in mind and allow plenty
of time to resolve any issue which might arise.
By waiting until 10:13 pm (Pacific Standard Time) of the last day of his trial period
to file his notice, Applicant did not exercise a best practice.
Applicant relies on TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 306.05(c) (2018) to support the timeliness of his notice of reliance.46
As noted in TMEP § 306.03, the filing date given to
correspondence received by fax transmission is the date
that the complete transmission is received by a USPTO fax
machine, unless the transmission is completed on a
Saturday, Sunday, or Federal holiday within the District of
Columbia, in which case the filing date is the next
succeeding day that is not a Saturday, Sunday, or Federal
holiday within the District of Columbia.
The date of transmission on the certificate is used only to
determine whether the correspondence was transmitted to
the USPTO within the filing period.
___
If the correspondence includes a signed certificate of
transmission, and the date of transmission on the
certificate is within the filing period, the correspondence is
considered to be timely.
For example, if a West Coast applicant transmitted
correspondence by fax on the last day of the response

46 Applicant’s Brief, p. 2 (59 TTABVUE 7).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 13 -

period, beginning before 9:00 p.m. Pacific Time (midnight
Eastern Time) but completed after 9:00 p.m. Pacific Time,
the USPTO would give the correspondence a filing date as
of the next business day, because that is the date on which
the USPTO received the complete transmission. However,
if the practitioner affixed a certificate of transmission to
the faxed correspondence indicating that the
correspondence was being transmitted on the last day of
the response period, then the correspondence would be
considered timely filed, even though the transmission
completed after 9:00 p.m. Pacific Time (midnight Eastern
Time) was received in the USPTO the day after the
deadline for response.
There are two problems with Applicant’s analogy to filing by facsimile. First, the
Board does not accept filings by facsimile. “Documents that relate to proceedings
before the Trademark Trial and Appeal Board must be filed electronically with the
Board through ESTTA.” Trademark Rule 2.190(b), 37 C.F.R. § 2.190(b).
Second, even if we applied Applicant’s analogy to facsimile filing used by the
Trademark Examining Operation, Applicant’s notice of reliance would still be late.
Because Applicant did not file his notice of reliance until 10:13 pm Pacific Standard
Time (1:13 am Eastern Standard Time), the notice of reliance was late when
Applicant began filing it.
This is characteristic of the way in which Applicant has prosecuted these
oppositions, why the Board had little patience with Applicant, and why the Board
found Applicant’s notice of reliance untimely. We find no reason to set aside the
decision in our July 29, 2020 order striking Applicant’s notice of reliance and,
therefore, we will not consider Applicant’s notice of reliance.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 14 -

II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s applications for his YOGI trademarks. As
discussed above, because Opposer attached to its Notices of Opposition copies of its
pleaded registrations printed from the USPTO TSDR database showing the current
status of and title to the registrations, we receive them into evidence and make them
part of the record. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).47 Applicant
did not submit any testimony or evidence during trial. Opposer also introduced the
testimony and evidence listed below:
A. Opposer’s testimony and evidence.
1. Notice of reliance on Applicant’s admissions to select request for
admission;48
2. Notice of reliance on an excerpt from Opposer’s website yogiproducts.com;49
3. Notice of reliance on excerpts from Applicant’s discovery deposition;50
4. Testimony declaration of Maureen Sanders, Opposer’s counsel, introducing
an excerpt of the transcript of a hearing in a New Mexico law suit between

47 Thus, it was unnecessary for Opposer to refile them at 35 TTABVUE.
48 33 TTABVUE 5-23.
49 34 TTABVUE 5-6.
50 36 TTABVUE. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i), provides that the
proffering party may introduce a part of the discovery deposition. Opposer posted the portions
of Applicant’s discovery deposition designated confidential at 37 TTABVUE.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 15 -

Opposer’s trustees and Bibiji wherein Applicant’s counsel is cross-examined
purportedly having some relevance to the issues in these proceedings;51
5. Notice of reliance on official records from the above-noted New Mexico civil
action between Opposer’s trustees and Bibiji purportedly having some
relevance to the issues in these proceedings;52 and
6. Testimony declaration of Ek Ong Kaur Khalsa, one of Opposer’s trustees.53
III. Entitlement to a Statutory Cause of Action
Even though Applicant does not contest it, Opposer’s entitlement to a statutory
cause of action, formerly referred to as “standing,”54 is a threshold issue in every inter
partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277
(Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish
entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest
falling within the zone of interests protected by the statute and (ii) proximate
causation. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana,

51 38 TTABVUE.
52 39 TTABVUE.
53 41 TTABVUE. Opposer posted the portions of the Khalsa declaration designated
confidential at 40 TTABVUE.
54 Our decisions have previously analyzed the requirements of §§ 1063 and 1064 under the
rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action.
Despite the change in nomenclature, our prior decisions and those of the Federal Circuit
interpreting “standing” under §§ 1063 and 1064 remain applicable.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 16 -

111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (TTAB 1982).
Because Opposer has properly introduced into evidence copies of its pleaded
registrations showing the current status of and title to the registrations, Opposer has
established its entitlement to a statutory cause of action. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016)
(entitlement established based on pleaded registration made of record).
Once a plaintiff has established its entitlement to a statutory cause of action for
one ground, it has the right to assert any other grounds. See Poly-Am., L.P. v. Ill. Tool
Works, Inc., 124 USPQ2d 1508, 1512 (TTAB 2017); Corporacion Habanos SA v.
Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing
as to at least one ground, primarily geographically deceptively misdescriptive, they
may assert any other legally sufficient claims including those under Section 2(a), the
Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1543 n.10 (TTAB 2009).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 17 -

IV. Whether Applicant is the owner of the YOGI COCONUT WATER
trademark filed under Section 1(a) (Opposition No. 91233731).
Applicant, in his Answer, admits that he is not the owner of the YOGI COCONUT
WATER trademark.55 As noted above, Applicant requests that the application Serial
No. 86963337 for the mark YOGI COCONUT WATER register in the name of
Opposer and Bibiji as co-owners.56 In essence, Applicant admits that the owners are
Opposer and Bibiji.
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), provides (emphasis added):
The owner of a trademark used in commerce may register
his trademark under this chapter …
By filing in the Patent and Trademark Office - -
(1) a written application …
Application Serial No. 86963337 for the mark YOGI COCONUT WATER is void
ab initio because Applicant filed it in the name of someone [Applicant] other than the
owner of the mark [Opposer and Bibiji]. See Lyons v. Am. Coll. Of Veterinary Sports
Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1027, (Fed. Cir. 2017)
(“registration by one who did not own the mark at the time of filing renders the
underlying application void ab initio.”); Huang v. Tzu Wei Chen Food Co., 849 F.2d
1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (application held void because it was
filed in the name of an applicant who was not the owner of the mark at the time of

55 Applicant’s Answer ¶¶1, 2, 4 and 13 (13 TTABVUE 4-5 and 7). See also Applicant’s
admissions to Opposer’s request for admission Nos. 13 and 17 (33 TTABVUE 10-11) (Bibiji is
a co-owner of Opposer’s pleaded registrations).
56 Applicant’s Answer ¶24 (13 TTABVUE 9).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 18 -

filing); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991) (application
held void ab initio because it was not filed in the name of the owner of the mark).
The Board cannot waive this statutory requirement. Huang, 7 USPQ2d at 1336.
Applicant filed the application and the USPTO examined it and published it for
opposition, all in the name of an applicant who was not the owner of the trademark
at filing or at any time during pendency of the application.
We sustain Opposition No. 91233731 against the registration of application Serial
No. 86963337 for the mark YOGI COCONUT WATER on the ground that the
application is void ab initio for failure to comply with Section 1(a) of the Trademark
Act, 15 U.S.C. § 1(a).
Because this decision completely disposes of Applicant’s application Serial No.
86963337 for the mark YOGI COCONUNT WATER, we need not reach Opposer’s
claim that Applicant failed to make a bona fide use of the mark. “Like the federal
courts, the Board has generally used its discretion to decide only those claims
necessary to enter judgment and dispose of the case. . . [T]he Board’s determination
of registrability does not require, in every instance, decision on every pleaded claim.”
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
V. Whether Applicant is the owner of the YOGI GINGER FIRE WATER
(Opposition No. 91233732) and YOGI TURMERIC WATER (Opposition
No. 91223733) marks.
Applicant filed application Serial No. 86963343 for the mark YOGI GINGER FIRE
WATER and Serial No. 86963337 for the mark YOGI TURMERIC WATER under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 19 -

a bona fide intent to use the mark in commerce. There is no statutory requirement
that the filer of an intent-to-use application be the owner of the mark at the time it
files an intent-to-use application; rather, the filer avers that: “The signatory believes
that the applicant is entitled to use the mark in commerce. The applicant has a bona
fide intention to use the mark in commerce on or in connection with the goods/services
in the application.” Therefore, a claim that an applicant was not the rightful “owner”
of the mark when the applicant filed the application is not available when the
application, as originally filed, is not based on use of the mark in commerce. Hole In
1 Drinks, 2020 USPQ2d at *5; Norris v. PAVE: Promoting Awareness, Victim
Empowerment, 2019 USPQ2d 370880, *4 (TTAB 2019). Thus, there is technically no
statutory basis for Opposer’s nonownership claim.
We dismiss Opposition Nos. 91233732 and 91233733 on the ground that Applicant
is not the owner of the marks YOGI GINGER FIRE WATER and YOGI TURMERIC
WATER. As discussed more fully below, because we affirm Opposer’s Section 2(d)
likelihood of confusion claims, we need not decide Opposer’s claim that Applicant did
not have a bona fide intent to use the marks. Multisorb Tech., 109 USPQ2d at 1171.
VI. Likelihood of Confusion
A. Priority

Because Opposer’s pleaded registrations are properly of record and Applicant has
not filed a counterclaim to cancel Opposer’s pleaded registrations, priority is not an
issue as to the marks and goods covered by the registrations. See Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 20 -

v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 110 (CCPA 1974)).
B. Likelihood of Confusion factors

We base our determination under Section 2(d) 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)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at
1533).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 21 -

(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.”). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v.
Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 22 -

1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)).
The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). Because the goods at issue are tea, coconut water and bottled
flavored water, the average customer is an ordinary consumer.
Opposer’s marks are YOGI, in typed drawing form, and YOGI TEA (the exclusive
right to use “tea” disclaimed), in standard character form.57 Applicant is seeking to
register YOGI COCONUT WATER (“Coconut Water” disclaimed), YOGI GINGER
FIRE WATER (“Ginger” and “Water” disclaimed), and YOGI TURMERIC WATER
(“Turmeric Water” disclaimed) all in standard character form.

57 Effective November 2, 2003, the USPTO amended Trademark Rule 2.52, 37 C.F.R § 2.52,
to replace the term “typed” drawing with “standard character” drawing. A typed mark is the
legal equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly
were known as ‘typed' marks.”); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983) (rejecting argument that for purposes of determining whether two marks are
similar, a mark in a typed drawing (equivalent to modern standard character format) is
distinct from such mark in a logo format; “[b]y presenting its mark in a typed drawing, a
difference cannot legally be asserted by that party” (emphasis in original)).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 23 -

Applicant admits Opposer’s marks and Applicant’s marks are similar because
they share the term “Yogi.”58 We agree because the term YOGI is the dominant
element of all the marks. There is nothing improper in stating that, for rational
reasons, we give more or less weight to a particular feature of a mark, such as a
common dominant element, provided the ultimate conclusion rests on a consideration
of the marks in their entireties. Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this regard, the term YOGI, as the first word of the marks, has a position of
prominence. Consumers are likely to notice and remember the term YOGI so it plays
a dominant role in the mark. See In re Detroit Athletic Co., 903 F.3d 1297,
128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the ‘identity of the marks’ two
initial words is particularly significant because consumers typically notice those
words first”); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word).
In addition, the term “Yogi” is an arbitrary term when applied to the goods. Thus,
consumers will focus on YOGI as the primary indicator of source rather than

58 Applicant’s Answer ¶17 (13 TTABVUE 8).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 24 -

descriptive terms the parties disclaimed. Opposer disclaimed the exclusive right to
use the descriptive term “tea” and Applicant disclaimed the exclusive right to use the
descriptive terms “Coconut Water,” “Ginger” and “Water,” and “Turmeric Water” in
his respective marks. The law is well settled that disclaimed, descriptive matter may
have less significance in likelihood of confusion determinations. See Detroit Athletic
Co., 128 USPQ2d at 1050 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting Nat’l Data Corp., 224 USPQ at
752); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed
matter is often “less significant in creating the mark’s commercial impression”).
In addition, it is reasonable to assume some consumers will drop the descriptive
terms “tea,” “coconut water,” and “turmeric water,” as well the term “ginger fire
water” when referring to YOGI TEA, YOGI COCONUT WATER, YOGI TURMERIC
WATER, as well as YOGI GINGER FIRE WATER and refer to the products simply
as YOGI. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816,
1819 (TTAB 2015) (“While Opposer’s beer was originally sold under the BUDWEISER
brand, customers soon began to abbreviate the mark, calling for BUDWEISER beer
just by the name ‘BUD.’”); Big M Inc. v. The United States Shoe Co., 228 USPQ 614,
616 (TTAB 1985) (“[W]e cannot ignore the propensity of consumers to often shorten
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 25 -

trademarks and, in the present case, this would be accomplished by dropping the
‘T.H.’ in referring to registrant’s stores [T.H. MANDY].”).
“[U]sers of language have a universal habit of shortening full names – from haste
or laziness or just economy of words. Examples are: automobile to auto; telephone
to phone; necktie to tie; gasoline service station to gas station.” In re Abcor Dev. Corp.,
588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring) (explaining that
it is “inevitable” that consumers will call a gas monitoring badge a gas badge).
Finally, Applicant’s marks encompass the entirety of Opposer’s mark YOGI. While
there is no explicit rule that we must automatically find marks similar when
Applicant’s marks incorporate the entirety of Opposer’s mark, the fact that
Applicant’s marks does incorporate all of Opposer’s mark increases the similarity
amongst them. See China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337,
83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar to
opposer’s mark CHI both for electric massagers); In re Toshiba Med. Sys. Corp.,
91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for
medical magnetic resonance imaging diagnostic apparatus confusingly similar to
TITAN for medical ultrasound diagnostic apparatus); Broadcasting Network Inc. v.
ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007) (respondent’s mark ABS-CBN
is similar to petitioner’s mark CBN both for television broadcasting services).
We find the marks are similar in their entireties as to appearance, sound,
connotation and commercial impression.
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 26 -

B. The similarity or dissimilarity and nature of the goods.
Opposer registered the marks in its pleaded registrations for “tea.” Applicant is
seeking to register YOGI COCONUT WATER for “coconut water” and YOGI GINGER
FIRE WATER and YOGI TURMERIC WATER for “flavored bottled water.” Applicant
admits that the goods are related.59
Factual allegations made in the pleadings are not evidence of the matters alleged,
except insofar as we deem them admissions against interest. See Baseball Am. Inc.,
71 USPQ2d at 1846 n.6; Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1548
n.6 (TTAB 1990) (pleadings have evidentiary value only to the extent they contain
opponent’s admission against interest), aff’d on other grounds, 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991). Under the circumstances of this case, we find that
Applicant’s admissions are admissions of fact that, in this case, are admissions
against interest sufficient to establish the goods of the parties are related. See
Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 174 USPQ 395, 396 n.4 (CCPA 1972)
and Baker’s Franchise Corp. v. Royal Crown Cola Co., 404 F. 2d 985, 160 USPQ 192,
193-194 (CCPA 1969) where the court held the admissions in prior pleadings were
admissions of fact properly viewed as evidentiary, and neither judicial nor legally
conclusive.
We find the goods are related.

59 Applicant’s Answer ¶18 (13 TTABVUE 8).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 27 -

C. Established, likely-to-continue channels of trade and classes of
consumers.

Applicant admits the parties offer their goods in the same channels of trade to the
same classes of consumers.60 For the reason discussed above, we find that Applicant’s
admission is an admission of fact that, in this case, is an admission against interest
sufficient to prove that the parties offer their goods in the same channels of trade to
the same classes of consumers.
We find that the parties offer their goods in the same channels of trade to the same
classes of consumers.
D. Conclusion
Because the marks are similar, the goods are related and are offered in the same
channels of trade to the same classes of consumers, we find that Applicant’s marks
YOGI COCONUT WATER for “coconut water” and YOGI GINGER FIRE WATER
and YOGI TURMERIC WATER both for “flavored bottled water” are likely to cause
confusion with Opposer’s marks YOGI and YOGI TEA for “tea.”
Applicant argues, in essence, that because “Applicant … stands in the shoes of
Bibiji as co-owner,” the likelihood of confusion analysis is irrelevant.61 That is not
correct. Applicant filed the applications in his own name, not in the names of Bibiji
and Opposer. Any registrations that would issue would be in Applicant’s name, not
Bibiji and Opposer.

60 Applicant’s Answer ¶¶19 and 20 (13 TTABVUE 8). See also Applicant’s admissions to
Opposer’s requests for admission Nos. 21-24 (33 TTABVUE 12-14).
61 Applicant’s Brief, p. 16 (59 TTABVUE 21).
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 28 -

While an application can be amended to correct an inadvertent error in the
manner in which an applicant’s name is set forth (see TMEP § 1202.02(c)), an
application cannot be amended to substitute another entity as the applicant, as
Applicant here seeks to do. Trademark Rule 2.71(d), 37 C.F.R. § 2.71(d) (“the
application cannot be amended to set forth a different entity as the applicant.”). See
also Huang, 7 USPQ2d at 1335-36; Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d
1235, 1239-44 (TTAB 2007); Am. Forests v. Sanders, 54 USPQ2d 1860, 1861-63
(TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (intent-to-use application filed by
individual void where the actual entity possessing the bona fide intention to use the
mark was a partnership comprised of the individual and her husband); In re Tong
Yang Cement Corp., 19 USPQ2d 1689, 1691 (TTAB 1991) (application filed by
corporation void where owner of mark was joint venture of which applicant
corporation was member).
Because we sustain the oppositions on the ground of likelihood of confusion and
the ground that the YOGI COCONUT WATER application is void ab initio, we do not
reach Opposer’s claim that Applicant failed to make bona fide use of the mark YOGI
COCONUT WATER or that Applicant lacked a bona fide intent to use the marks
YOGI GINGER FIRE WATER and YOGI TURMERIC WATER. See Multisorb Tech.,
109 USPQ2d at 1171.
Decision: Opposition No. 91233731 is sustained under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d) and on the ground that Applicant is not the owner
Opposition No. 91233731
Opposition No. 91233732
Opposition No. 91233733

- 29 -

of the application and, therefore, the application is void ab initio. We do not reach
Opposer’s claim that Applicant failed to make bona fide use of its mark.
Opposition Nos. 91233732 and 91233733 are sustained under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), and, therefore, we do not reach Opposer’s futile
nonownership claim in Opposition Nos. 91233732 and 91233733.