Boston Iced Tea Company, Inc.v.BBK Pictures, Inc.

Trademark Trial and Appeal BoardJul 20, 2017

No. 92061664 (T.T.A.B. Jul. 20, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: July 20, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ BBK Pictures, Inc. v. Boston Iced Tea Company, Inc. _____ Opposition No. 91214191 _____ Boston Iced Tea Company, Inc. v. BBK Pictures, Inc. _____ Cancellation No. 92061664 _____ Dina Leytes of Griesing Law LLC, for BBK Pictures, Inc. Roger N. Behle, Jr. of Foley Bezek Behle & Curtis, LLP, for Boston Iced Tea Company, Inc. _____ Before Bergsman, Ritchie and Hightower, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Boston Iced Tea Company, Inc. (“Applicant”) seeks registration on the Principal Register of the mark MAGUIRE’S BOSTON ICED TEA CO. and design, shown below, Opposition No. 91214191 Cancellation No. 92061664 - 2 - for “beverages made of tea; beverages with a tea base; iced tea; tea; tea-based beverages,” in Class 30.1 The application includes the description of the mark set forth below: The mark consists of the wording "MAGUIRE'S BOSTON ICED TEA CO." and the design of a tall ship. The word "Maguire's", in a stylized font, is positioned above the word "Boston" in the same stylized font, positioned above the words "Iced Tea Co.", in the same stylized font. The wording is all in white and enclosed within a white oval against a red rectangular background carrier. The wording is to the right of a gray square background carrier containing a tall ship image in varying shades of gray. The color(s) red, white, and gray is/are claimed as a feature of the mark. Applicant disclaimed the exclusive right to use “Boston Iced Tea Co.” On December 24, 2013, BBK Pictures, Inc. filed a Notice of Opposition under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles Opposer’s prior filed trademark application (now registered) for 1 Application Serial No. 85884091 was filed on March 22, 2013, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Opposition No. 91214191 Cancellation No. 92061664 - 3 - the mark BOSTON TEA (standard characters) for the goods listed below as to be likely to cause confusion: Tea-based beverages with fruit flavoring; tea; tea-based beverages, in Class 30; and Concentrated fruit juice; concentrates for making fruit juices; fruit drinks and fruit juices; fruit drinks and juices; fruit juices; fruit juice bases; fruit juice concentrates; herbal juices; mixed fruit juice; non-alcoholic beverages containing fruit juices; non-alcoholic fruit juice beverages; non-alcoholic beverages with tea flavor, in Class 32.2 Opposer disclaimed the exclusive right to use the word “Tea.” In addition, Opposer claimed that its mark “has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same for related goods or services of U.S. Registration No(s). 1994407,” owned by Michael Maltepes, for the mark CLASSIC BOSTON TEA and design, shown below, for “tea and tea-based beverages,” in Class 30.3 2 Application Serial No. 85237182, filed February 8, 2011. The application registered as Registration No. 4703971 on March 17, 2015. When an opposer pleads ownership of an underlying application, opposer may make of record the subsequently issued registration of that application without amending the pleading. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014). 3 Registration No. 1994407 registered on August 20, 1996; second renewal. This registration was assigned to Opposer on March 31, 2015. There is nothing in the record that explains why Opposer claimed ownership of a mark it did not own or why the Examining Attorney accepted the claim of acquired distinctiveness based on a registration owned by an entity other than Opposer. Opposition No. 91214191 Cancellation No. 92061664 - 4 - Registrant disclaimed the exclusive right to use the word “Tea.” Applicant denied the salient allegations in the Notice of Opposition and, on June 3, 2015, filed a separate petition to cancel the mark in Opposer’s pleaded application which had then registered. Applicant alleged that Opposer’s pleaded registration is void ab initio because Opposer is not the owner the BOSTON TEA mark, Opposer committed fraud during the prosecution of its application because Opposer “has not sold any of the goods listed in its application,” and the mark BOSTON TEA is primarily geographically deceptively misdescriptive in accordance with Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3). Opposer denied the salient allegations in the petition to cancel. However, with respect to the Section 2(e)(3) claim, Opposer admitted that its products do not originate from Boston, nor are they sold in Boston, and that Opposer “is currently selling its goods only in Pennsylvania and New Jersey.” The Board consolidated proceedings in its November 30, 2015 Order in the cancellation proceeding. All references to the record are to Opposition No. 91214191 unless otherwise indicated. I. Preliminary Issues. A. Accelerated Case Resolution. The parties agreed to use the Board’s accelerated case resolution procedure. Specifically, the parties agreed that testimony and other evidence exhibits may be introduced as attachments to their briefs, testimony may be presented by declaration Opposition No. 91214191 Cancellation No. 92061664 - 5 - or affidavit, and documents produced in response to a request for production of documents may be submitted as an attachment to the briefs.4 B. Whether Applicant’s claim that Opposer committed fraud on the USPTO by claiming that its mark BOSTON TEA “has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same for related goods or services of U.S. Registration No(s). 1994407,” owned by Michael Maltepes, for the mark CLASSIC BOSTON TEA and design was tried by implied consent? In its Supplemental Reply Brief, Applicant, for the first time, asserted that Opposer’s claim of acquired distinctiveness by virtue of its ownership of Registration No. 1994407, owned by Michael Maltepes, is “further evidence of fraud on the USPTO by [Opposer].”5 In the Petition to Cancel Opposer’s Registration No. 4703971 for the mark BOSTON ICE TEA, Applicant asserted, inter alia, Opposer committed fraud during the prosecution of its application because Opposer “has not sold any of the goods listed in its application.” Applicant did not plead that Opposer committed fraud by claiming ownership of Registration No. 1994407, nor did Applicant amend its Petition for Cancellation to assert that claim. Raising a claim for the first time in a Reply Brief is untimely because Opposer had no notice of the claim and no opportunity to respond. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB 2007) (raising claim for first time in plaintiff's brief is manifestly untimely; belated fraud claim given no further consideration). 4 5 TTABVUE and 23 TTABVUE. Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, “[t]he testimony of a witness in inter partes cases may be submitted in the form of an affidavit or declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence … subject to the right of any party to elect to take and bear the expense of an oral cross-examination of that witness.” 5 Applicant’s Supplemental Reply Brief, p. 6 (33 TTABVUE 7). Opposition No. 91214191 Cancellation No. 92061664 - 6 - Moreover, because Opposer claimed ownership of the registration which is the subject of Applicant’s purported fraud claim in its pleaded application/registration, Opposer did not conceal any information from the USPTO from which we would be able to infer that Opposer intended to deceive the USPTO. Applicant’s claim that Opposer committed fraud by claiming that Opposer’s mark BOSTON TEA had acquired distinctiveness by virtue of Opposer’s ownership of Registration No. 1994407 is given no consideration. II. The Record. The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application file and Opposer’s registration file. The record also includes the testimony and evidence listed below. A. Stipulated facts. 1. Applicant’s and Opposer’s goods are similar in nature; 2. Neither parties’ marks are famous; and 3. Neither party is aware of any reported instances of confusion.6 B. Opposer’s testimony and evidence. 1. Applicant’s responses to Opposer’s request for production of documents;7 2. Applicant’s responses to Opposer’s interrogatories;8 3. Excerpts from Applicant’s website;9 6 6 TTABVUE 2. 7 15 TTABBVUE 24-63. 8 15 TTABVUE 65-74. 9 15 TTABVUE 107-112. Opposition No. 91214191 Cancellation No. 92061664 - 7 - 4. Declaration of Alysia Maltepes, Opposer’s owner, with attached exhibits;10 5. Deposition of Michael Arnold, Applicant’s primary owner, with attached exhibits;11 6. Declaration of Dina Leytes, Opposer’s counsel, with attached exhibits;12 and 7. Declaration of Michael Maltepes, Alysia Maltepes’ father and person who “runs” Opposer, with attached exhibits.13 C. Applicant’s testimony. Applicant introduced the deposition of Alysia Maltepes.14 III. The Parties. A. Opposer. Since 1994, Michael Maltepes has been selling tea and tea-based beverages in the Philadelphia area under the mark CLASSIC BOSTON TEA.15 In 1996, Mr. Maltepes registered the mark CLASSIC BOSTON TEA and design, shown below, for “tea and tea-based beverages,” in Class 30.16 10 15 TTABVUE 114-117. Applicant’s hearsay objections (Fed. R. Evid. 801) and best evidence objections (Fed. R. Evid. 1002) are overruled. The Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and other evidence in this specific case, including any inherent limitations, and this precludes the need to strike the testimony and evidence. 11 15 TTABVUE 118-247. Mr. Arnold owns 98½% of Applicant’s stock. Arnold Dep., p. 16 (15 TTABVUE 133). 12 19 TTABVUE 23-30. 13 32 TTABVUE 8-29. 14 18 TTABVUE and 33 TTABVUE. Applicant introduced the deposition twice. 15 M. Maltepes Decl. ¶1 (32 TTABVUE 8). 16 M. Maltepes Decl. ¶1 (32 TTABVUE 8); A. Maltepes Decl. ¶5 (15 TTABVUE 113). Registration No. 1994407 registered on August 20, 1996; second renewal. Opposition No. 91214191 Cancellation No. 92061664 - 8 - The application for registration was filed by Maltepes Bottling Co., Ltd. On October 8, 1996, Maltepes Bottling Co., Ltd. assigned the registration to Alysia, Inc. and recorded the assignment in the USPTO.17 On May 30, 1997, Alysia, Inc. assigned the registration to Michael Maltepes and recorded the assignment in the USPTO.18 On March 31, 2015, Michael Maltepes assigned the registration to Opposer and recorded the assignment in the USPTO.19 Alysia Maltepes is the sole owner of Opposer.20 Michael Maltepes is the father of Alysia Maltepes.21 Michael Maltepes “runs” Opposer22 and has been “guiding and teaching” his daughter “about the family beverage business since she started in this business in approximately 2010.”23 Michael Maltepes is the principal force behind 17 Recorded on October 18, 1996, at reel 1516, frame 0636. 18 Recorded on June 4, 1997, at reel 1594, frame 0319. 19 Recorded on March 31, 2015, at reel 5488, frame 0873. See also Leytes Decl. ¶5 (19 TTABVUE 23). 20 A. Maltepes Dep., p. 8 (33 TTABVUE 17); M. Maltepes Decl. ¶1 (32 TTABVUE 8). Opposer was originally formed in 2005 to produce independent films. A. Maltepes Dep., p. 9 (33 TTABVUE 18). Opposer did not generate any revenue as a producer of independent films. (Al Maltepes Dep., p. 10 (33 TTABVUE 19). 21 M. Maltepes Decl. ¶1 (32 TTABVUE 8); A. Maltepes Decl. ¶3 (15 TTABVUE 113). 22 A. Maltepes Dep. pp. 13 and 27 (33 TTABVUE 22 and 35). 23 M. Maltepes Decl. ¶1 (32 TTABVUE 8); A. Maltepes Decl. ¶6 (15 TTABVUE 113). Opposition No. 91214191 Cancellation No. 92061664 - 9 - Opposer. Alysia Maltepes is learning the business from the ground up and has virtually no business experience.24 She runs a coffee shop that she recently opened.25 A. I know we’ve generated some revenue. I don’t know the details. My father helps me out with that. I’m starting to get involved right now in the past few months. I basically own the company. He runs it. I also have a coffee shop. And now I’m starting to get involved. And he’s teaching me slowly things about the business, bottling company, et cetera.26 Thus, based on her lack of knowledge and experience, Ms. Maltepes could not identify any of Applicant’s customers, revenues generated, or units of product produced.27 As indicated above, Opposer filed Application Serial No. 85237182 for the mark BOSTON TEA (standard characters) on February 8, 2011. Opposer “began to sell its BOSTON TEA brand tea and tea-based beverage products in Pennsylvania and New Jersey in March 2014.”28 When Opposer first started selling BOSTON TEA products, it outsourced the bottling to contract packers.29 At the beginning of January 2015, 1300 North 9th Street, LLC, jointly owned by Alysia and Michael Maltepes, began 24 A. Maltepes Dep., pp. 12-21 (33 TTABVUE 21-30). For example, Ms. Maltepes was confused when Applicant’s counsel questioned her about whether Opposer paid taxes. A. Maltepes Dep., p. 41 (33 TTABVUE 50) (“What does that mean exactly, if we’ve made revenue and paid income tax?”). 25 A. Maltepes Dep., p. 13 (33 TTABVUE 22). 26 A. Maltepes Dep., p. 14 (33 (33 TTABVUE 23). 27 A. Maltepes Dep., pp. 14-218 (33 TTABVUE 23-27). 28 M. Maltepes Decl. ¶2 (32 TTABVUE 8); A. Maltepes Dep., pp. 14-15 (33 TTABVUE 23-24). 29 M. Maltepes Decl. ¶3 (32 TTABVUE 9). Applicant also has its products produced by contract packers. Arnold Dep., p. 10 (15 TTABVUE 127). Opposition No. 91214191 Cancellation No. 92061664 - 10 - bottling Opposer’s BOSTON TEA products.30 Opposer’s application for BOSTON TEA registered as Registration No. 4703971 on March 17, 2015. Opposer “continues to sell its BOSTON TEA brand tea and tea-based beverage products to mom and pop restaurants, grocery stores, and food trucks in a geographic area that has expanded to include Pennsylvania, New Jersey and also Delaware.”31 B. Applicant. Prior to founding Applicant, Michael Arnold, Applicant’s principal, built custom homes.32 Mr. Arnold learned about the beverage business by asking questions and doing research.33 In addition, he was mentored by people experienced in the business.34 Applicant hired a food scientist to develop its products.35 Applicant first used its mark on March 22, 2012.36 Applicant is doing business in California, Massachusetts, Florida and Arizona and intends to start in Nevada.37 Applicant sells its products in supermarkets in California and in small stores and 30 M. Maltepes Decl. ¶¶6 and 7 (32 TTABVUE 10); A. Maltepes Dep., p. 37 (33 TTABVUE 46); A. Maltepes Decl. ¶10 (15 TTABVUE 114). 31 M. Maltepes Decl. ¶10 (32 TTABVUE 11); A. Maltepes Decl. ¶13 (15 TTABVUE 114). 32 Arnold Dep., p. 14 (15 TTABVUE 131). 33 Arnold Dep., p. 15 (15 TTABVUE 132). 34 Id. 35 Arnold Dep., p. 22 (15 TTABVUE 139). 36 Arnold Dep., p. 41 (15 TTABVUE 158); Applicant’s response to Opposer’s interrogatory Nos. 4 and 5 (15 (TTABVUE 67). 37 Arnold Dep., p. 32 (15 TTABVUE 149). Opposition No. 91214191 Cancellation No. 92061664 - 11 - test markets in Massachusetts and Florida.38 Applicant has used cold packers or contract packers in California and Washington to manufacture its products.39 IV. Applicant’s counterclaim. A. Standing. When Applicant filed its Answer, the mark in Opposer’s pleaded application had not registered and, therefore, Applicant could not file a counterclaim to cancel it. During the prosecution of the opposition, the mark in Opposer’s pleaded application registered. Thus, Applicant’s separately filed petition for cancellation is equivalent to a counterclaim to cancel Opposer’s pleaded registration. Because the mark in Opposer’s pleaded application/registration has been asserted in the opposition, Applicant has established its standing as plaintiff in the petition for cancellation. Cf. Orange Bang, Inc. v. Ole’ Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1438 (TTAB 1995). In any event, Applicant, as a competitor of Opposer, has an interest in seeing that any other competitor in the field of beverages does not register a mark that is, assertedly, primarily geographically deceptively misdescriptive. See Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1876 (TTAB 2011). 38 Arnold Dep., p. 32 (15 TTABVUE 149). 39 Arnold Dep., p. 33 (15 TTABVUE 150). Opposition No. 91214191 Cancellation No. 92061664 - 12 - B. Whether Opposer’s application is void ab initio because Opposer is not the owner of the registered mark? After indulging his daughter’s attempt to make movies, Michael Maltepes persuaded Alysia Maltepes that it was time to enter the family beverage business.40 As noted above, Michael Maltepes has been in the beverage business since 1994.41 Alysia Maltepes repurposed Opposer, the entity she formed to make films, to be a beverage business. Q. What is [Opposer’s] primary business? A. It’s a bottling company. Q. And when you say bottling company, do you mean that [Opposer] manufactures bottled beverages for sale? A. Yes. Q. And in 2005, when you formed [Opposer], what products did [Opposer] sell? A. When I formed it originally, it was for my film company. I produce independent films. But then over the years, we’ve made it into a bottling company. And that’s what it is today.42 Opposer filed a trademark application for the mark BOSTON TEA, building on the mark CLASSIC BOSTON TEA and design used by Michael Maltepes. 40 A. Maltepes Decl. ¶ 6 (“In 2010, my father began to encourage me to enter into the family tea and tea-based beverage business with his support, tutelage and financial backing.”). 41 M. Maltepes Decl. ¶1 (32 TTABVUE 8). 42 A. Maltepes Dep., pp. 8-9 (33 TTABVUE 17-18); see also A. Maltepes Decl. ¶2 (15 TTABVUE 113) (“[Opposer] is a Pennsylvania corporation that was formed in 2006, initially to produce and promote my first feature film.”). Opposition No. 91214191 Cancellation No. 92061664 - 13 - Mr. Maltepes operates Opposer for Alysia Maltepes in connection with beverages while Alysia Maltepes learns the business.43 Relying on the testimony of Alysia Maltepes, Applicant argues that Opposer is not the owner of the mark BOSTON TEA, the mark in Opposer’s pleaded application/registration, because 1300 North 9th Street LLC, the entity jointly owned by Alysia and Michael Maltepes, sells the BOSTON TEA products.44 This testimony was clarified, however, by Michael Maltepes, who, as noted, has been running Opposer and has been settling his daughter into her new career. Opposer began selling tea and tea-based beverages in Pennsylvania and New Jersey in March 2014.45 Opposer used 1300 North 9th Street, LLC as a contract packer for its beverages presumably after January 2015 when that entity received its license for food manufacture.46 Mr. Maltepes, whose testimony we find uncontroverted and convincing, specifically testified to the following facts: • 1300 North 9th Street, LLC manufactures, markets and distributes products under the BOSTON TEA mark on behalf of Opposer through an agreement with Opposer;47 and 43 A. Maltepes Dep. pp. 13 and 27 (33 TTABVUE 22 and 35); M. Maltepes Decl. ¶1 (32 TTABVUE 8); A. Maltepes Decl. ¶8 (15 TTABVUE 114) (“My father and I chose BOSTON TEA for the application to build on the family’s longstanding use of BOSTON in connection with tea and tea-based beverages.”). 44 Applicant’s Brief, p. 9 (16 TTABVUE 10). 45 M. Maltepes Decl. ¶2 (32 TTABVUE 8); A. Maltepes Decl. ¶12 (15 TTABVUE 114) (“BOSTON TEA has been sold in Pennsylvania and New Jersey since March 2014). 46 M. Maltepes Decl. ¶6 (32 TTABVUE 10). 47 M. Maltepes Decl. ¶6 (32 TTABVUE 10). Opposition No. 91214191 Cancellation No. 92061664 - 14 - • Opposer sells and distributes products directly itself.48 That Opposer uses a third party to bottle its products is consistent with the testimony of Michael Arnold, Applicant’s principal, who testified that Applicant also uses contract packers to bottle its beverages.49 Relying on the testimony of Alysia Maltepes,50 Applicant argues that because 1300 North 9th Street, LLC sells the BOSTON TEA products and because there are no written agreements between Opposer and 1300 North 9th Street, LLC, it is 1300 North 9th Street, LLC that is using and owns the mark. Applicant’s argument is contradicted by the testimony of Michael Maltepes, with supporting documentation, that Opposer uses contract packers other than 1300 North 9th Street, LLC and that Opposer sells and distributes BOSTON TEA products directly itself. Assuming arguendo that 1300 North 9th Street, LLC is manufacturing the BOSTON TEA product and selling the BOSTON TEA product, it is doing so by virtue of a license between 1300 North 9th Street, LLC and Opposer under which Opposer controls the use of the mark by 1300 North 9th Street, LLC.51 A license may be oral. Nestle Co. v. Nash-Finch Co., 4 USPQ2d 1085, 1088 (TTAB 1987) (“While there is no written license agreement dealing specifically with DELI QUIK per se, it is apparent that an affiliated store electing to participate in the merchandising program offered 48 M. Maltepes Decl. ¶7 (32 TTABVUE 10). 49 Arnold Dep., p. 33 (15 TTABVUE 150). 50 A. Maltepes Dep., pp. 36-37, 60-61, 63 and 85 (45-46, 69-70, 72 and 94). 51 A. Maltepes Decl. ¶11 (“[Opposer] exclusively licenses the use of the BOSTON TEA mark to 1300 North 9th Street, LLC.”). Opposition No. 91214191 Cancellation No. 92061664 - 15 - by applicant becomes a licensee to use applicant's various trademarks.”); In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983); John Anthony, Inc. v. Fashions by John Anthony, Inc., 209 USPQ 517(TTAB 1980); Basic, Inc. v. Rex, 167 USPQ 696, 697 (TTAB 1970). Considering the familial relationship between the Maltepes, the fact that Mr. Maltepes is running Opposer for Alysia Maltepes, and that 1300 North 9th Street, LLC is jointly owned by Michael and Alysia Maltepes, it is not surprising that there is no formal license or contract between Opposer and 1300 North 9th Street, LLC. We find that Opposer is the owner of the mark BOSTON TEA in its pleaded application/registration and, therefore, dismiss the petition to cancel Opposer’s pleaded registration on the ground that Opposer is not the owner of the mark in Opposer’s pleaded application/registration. C. Whether Opposer committed fraud on the USPTO during the prosecution of its application for registration? Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes a false, material representation of fact in connection with an application to register with the intent of obtaining a registration to which it is otherwise not entitled. In re Bose Corp., 580 F.3d 1240, 1245, 91 USPQ2d 1938, 1939-40, 1521(Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); Embarcadero Techs., Inc. v. Delphix Corp, 117 USPQ2d 1518 (TTAB 2016). A party alleging fraud in the procurement of a registration bears the heavy burden of proving fraud with clear and convincing evidence. Bose, 91 USPQ2d at 1243 (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ Opposition No. 91214191 Cancellation No. 92061664 - 16 - 1033, 1044 (TTAB 1981)). For example, the Board will not find fraud if the evidence shows that a false statement was made with a reasonable and honest belief that it was true, rather than an intent to mislead the USPTO into issuing a registration to which the applicant was not otherwise entitled. See id.; see also Woodstock’s Enters. Inc. (Cal.) v. Woodstock’s Enters. Inc. (Or.), 43 USPQ2d 1440, 1443 (TTAB 1997), aff’d unpub’d, 152 F.3d 942 (Fed. Cir. 1998). Intent to deceive is an indispensable element of the analysis in a fraud case. See In re Bose Corp., 91 USPQ2d at 1941. The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, and evidence of deceptive intent must be clear and convincing. Id. A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class. Meckatzer Löwenbräu Benedikt Weiβ KG v. White Gold LLC, 95 USPQ2d 1185, 1188 (TTAB 2010); G&W Labs. Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (“each class of goods or services in a multiple class registration must be considered separately when reviewing the issue Opposition No. 91214191 Cancellation No. 92061664 - 17 - of fraud.”).52 Accordingly, Applicant’s argument that a finding of fraud voids the entire registration is incorrect.53 On January 6, 2016, Opposer filed a motion to amend its pleaded application/registration by deleting the goods identified in Class 32 “to clarify the exact nature of the goods in connection with which it continues to use the BOSTON TEA trademark.”54 Applicant did not consent to Opposer’s motion to delete the Class 32 goods in its pleaded registration.55 Because fraud cannot be cured by the deletion of goods from the registration, Opposer’s motion does not resolve the fraud claim in connection with the goods in Class 32. See Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1928 (TTAB 2006). The essence of Applicant’s fraud claim is that Opposer filed a Statement of Use attesting under oath that it had used its BOSTON TEA mark in connection with the 52 An applicant for a trademark registration may file for registration in more than one class by filing a single application. See Trademark Rule 2.86, 37 C.F.R. § 2.86. Such an application requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration. Id. Thus, a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead. See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101-02, 192 USPQ 24, 28 (CCPA 1976) (noting combined application is regarded as though it were group of individual applications); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 (TTAB 1987) (noting multiple-class application for goods and services is essentially two separate applications combined for convenience of applicant and USPTO); Electro-Coatings, Inc. v. Precision National Corp., 204 USPQ 410, 420 (TTAB 1979) (“there are, in law, three applications and three oppositions to be adjudicated, because each class in a multiple class application constitutes a separate case”). 53 Applicant’s Brief, p. 6 (16 TTABVUE 7); Applicant’s Supplemental Reply Brief, p. 4 (33 TTABVUE 5). 54 22 TTABVUE 3. 55 Id. Opposition No. 91214191 Cancellation No. 92061664 - 18 - goods listed in Classes 30 and 32 when it had not sold any of the goods listed in its application.56 However, in the previous section, we held that Opposer began selling tea and tea-based beverages in Pennsylvania and New Jersey in March 2014.57 Thus, Opposer did not make a false, material representation of fact in connection with its application to register BOSTON TEA in connection with its goods in Class 30 (“tea- based beverages with fruit flavoring; tea; tea-based beverages”). Also, we note that there is no evidence regarding Opposer’s intent to deceive the USPTO. Because intent to deceive is an indispensable element of the analysis in a fraud case, Applicant’s fraud claim fails with respect to both the goods in Class 30 and Class 32. Applicant’s petition to cancel the mark in Opposer’s pleaded application/registration on the ground of fraud in connection with the goods in Class 30 and 32 is dismissed. In view thereof, Opposer’s motion to delete the goods in Class 32 is granted. D. Whether BOSTON TEA is primarily geographically deceptively misdescriptive? The elements of whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 2(e)(3), are set forth below: (1) The primary significance of the mark is a generally known geographic location; 56 Applicant’s Brief, pp. 5-6 (16 TTABVUE 6-7). 57 M. Maltepes Decl. ¶2 (32 TTABVUE 8). Opposition No. 91214191 Cancellation No. 92061664 - 19 - (2) The goods do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods. See In re Miracle Tuesday LLC, 695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012); In re Spirits Int’l, N.V., 563 F.3d 1347, 1350–54, 90 USPQ2d 1489, 1490– 95 (Fed. Cir. 2009); In re Cal. Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003). Applicant’s petition to cancel the mark in Opposer’s pleaded application/registration under Section 2(e)(3) of the Trademark Act fails because there is no evidence or testimony regarding whether the use of the word “Boston” in Opposer’s mark is a material factor in a significant portion of the relevant consumers’ decision to buy the goods. In this regard, Applicant argued that “Opposer has admitted that its products and ingredients are not from Boston and could not articulate any reason why the word Boston was used as part of its mark.”58 However, this does not explain why “Boston,” the purportedly misdescriptive geographic term, affects the purchasing decision of a significant portion of the relevant consumers. By the same token, Applicant failed to explain why the name “Boston” is not a misdescriptive geographic term affecting purchasing decisions when used in its mark MAGUIRE’S BOSTON ICED TEA CO. and design. In this regard, Michael Arnold, 58 Applicant’s Brief, p. 13 (16 TTABVUE 14). Opposition No. 91214191 Cancellation No. 92061664 - 20 - Applicant’s principal, testified that the reason he refers to his product as Boston Iced Tea is because he is from Boston, as opposed to indicating that Applicant’s goods originate in Boston or describe a type of tea.59 Applicant stated that “MAGUIRE’S BOSTON ICED TEA was coined by Mr. Arnold without any particular meaning or significance, except as a source identifier for Applicant’s high-quality beverages.”60 Applicant’s petition to cancel the mark in Opposer’s pleaded application/registration on the ground that it is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 2(e)(3), is dismissed. In view of the foregoing, the petition to cancel Registration No. 4703971 is dismissed. V. Likelihood of confusion. A. Standing. Because Opposer’s pleaded application/registration has been made of record, and because Applicant’s petition to cancel the mark in Opposer’s pleaded registration has been dismissed, Opposer has established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). 59 Arnold Dep., p. 56 (15 TTABVUE 173). 60 Applicant’s response to Opposer’s interrogatory Nos. 6 and 8 (15 TTABVUE 67). Opposition No. 91214191 Cancellation No. 92061664 - 21 - B. Priority. Because Opposer has properly made of record its pleaded application/registration, and because Applicant’s petition to cancel that registration has been dismissed, Section 2(d) priority is not an issue in the opposition as to the mark and the goods covered by the pleaded registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). C. Likelihood of confusion. Our determination 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). 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.2d 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 (CCPA 1976) (“The Opposition No. 91214191 Cancellation No. 92061664 - 22 - 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, 116 USPQ2d 1406, 1409 (TTAB 2015). 1. The similarity or dissimilarity and nature of the goods and the established, likely-to-continue channels of trade. Applicant is seeking to register its mark for “beverages made of tea; beverages with a tea base; iced tea; tea; tea-based beverages.” The goods in Opposer’s pleaded application/registration are “tea-based beverages with fruit flavoring; tea; tea-based beverages.” The goods are in part identical. Because the goods described in the application and Opposer’s registration are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). 2. The similarity or dissimilarity of the marks. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we Opposition No. 91214191 Cancellation No. 92061664 - 23 - are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “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.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). 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); 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 Opposition No. 91214191 Cancellation No. 92061664 - 24 - 106, 108 (TTAB 1975). Because the goods at issue are tea-based beverages, the average customer is an ordinary consumer. Applicant’s mark is MAGUIRE’S BOSTON ICED TEA CO. and design, shown below, Opposer’s mark is BOSTON ICE TEA (standard characters). The marks are similar in appearance, sound, connotation and commercial impression because they share the phrase BOSTON ICE[D] TEA. The differences in the marks are Applicant’s inclusion of the name “Maguire’s,” the abbreviation “Co.”, the design of a ship, and the red background design. For the reasons set forth below, those differences do not distinguish the marks sufficiently to avoid confusion. Adding the “Co.” abbreviation to its mark does not affect the likelihood of confusion analysis because business entity names are free for all to use. See In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1796 (TTAB 2003) ("Inc." has no trademark significance); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998) (the designation “Inc.” has no trademark or service mark significance because it merely “indicates the type of entity that performs the services.”); In re Packaging Opposition No. 91214191 Cancellation No. 92061664 - 25 - Specialists, Inc., 221 U.S.P.Q. 917, 919, (TTAB 1984) (the designation "Inc." has no source indication or distinguishing capacity). Because Opposer’s mark is in standard characters, it is not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, and not in any particular display. Thus, Opposer’s mark might be depicted in any manner, regardless of the font style, size, or color, and might at any time in the future be displayed in a manner similar to Applicant’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); 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)). In other words, Opposer’s mark may be depicted in the same style script as Applicant’s mark with the name “Boston” prominently displayed above the words “Ice Tea.” Under the preceding scenario, the name “Boston” is the dominant part of both marks because “ICED TEA CO.” and “ICE TEA” are highly descriptive, if not generic, terms for tea-based beverages. With respect to the name “Maguire’s” in Applicant’s mark, we accord it less weight because Applicant displays it in the smallest font size of all the words in its mark. There is nothing improper in stating that, for rational Opposition No. 91214191 Cancellation No. 92061664 - 26 - reasons, more or less weight has been given 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further reinforcing the name “Boston” as the dominant part of Applicant’s mark is that it is the largest and most prominent word. It is the name “Boston” that catches the viewer’s eye. Moreover, in the case of marks consisting of words and a design, the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods. See In re Viterra Inc., 101 USPQ2d at 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987). Also, consumers are likely to shorten MAGUIRES BOSTON ICED TEA CO. to BOSTON ICED TEA because “Boston” is the largest and most prominent word in Applicant’s mark and “Co.” is a common entity designation. “[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 Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring). [C]ompanies are frequently called by shortened names, such as Penney’s for J.C. Penney’s, Sears for Sears and Roebuck (even before it officially changed its name to Sears Opposition No. 91214191 Cancellation No. 92061664 - 27 - alone), Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdales. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992). See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant's business is commonly referred to as “Giant”, it does indicate that people have called it by that name, omitting the word “Hamburgers”. Thus, in a conversation between two consumers in opposer's area about a place of business called “Giant”, there likely would be confusion about which “Giant” they were talking about.”); Big M Inc. v. The United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the “T.H.” in referring to registrant's stores [T.H. MANDY].”). The likelihood that consumers will shorten MAGUIRE’S BOSTON ICED TEA CO. to BOSTON ICED TEA is corroborated by the article posted on the Noozehawk website (newshawk.com) about Applicant referring to Applicant’s product as BOSTON ICED TEA.61 Santa Barbara Man Finds His Cup of (Iced) Tea with New Product Line Michael Arnold puts two years into taste-testing organic beverages for his newly launched Boston Iced Tea Co. * * * 61 Arnold Dep. Exhibit D (15 TTABVUE 229); Applicant’s responses to Opposer’s request for production of documents (15 TTABVUE 33). Opposition No. 91214191 Cancellation No. 92061664 - 28 - More than two years have gone into the development of Boston Iced Tea, Arnold says. * * * “What I want is,” he said, then paused. “On a really hot day, you grab (a Boston Iced Tea), and it’s cold and refreshing.” * * * He’s also adding mushroom extract to Boston Iced Tea.62 See also screenshots from Applicant’s website (boston-icedtea.com) displaying a BOSTON ICED TEA CO. logo without the name MAGUIRE’S.63 We also note that Applicant’s trade name is Boston Iced Tea Company, Inc., not Maguire’s Boston Iced Tea Company, Inc. Under similar circumstances, the Board has held that where Applicant’s mark incorporates the entirety of Opposer’s mark, the structure of Applicant’s mark suggests that Applicant’s products are a variation of Opposer’s products. See Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (“the use of the phrase BY FIRE ISLANDER [in FOLIO BY FIRE ISLANDER] may only tend to increase and not decrease the likelihood of confusion” with FOLIO); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS BY SASSAFRAS for women’s clothing is likely to cause confusion with SPARKS for shoes, boots and slippers, in part, because “[t]he words ‘by sassafras’ indicate to prospective purchasers that ‘sassafras’ is the name of the entity which is the source of the ‘SPARKS’ brand 62 Id. 63 Arnold Dep., Exhibit E (15 TTABVUE 233); Applicant’s responses to Opposer’s request for production of documents (15 TTABVUE 36). Opposition No. 91214191 Cancellation No. 92061664 - 29 - clothing. Prospective purchasers do not necessarily know or care which business calls itself ‘sassafras,’ but they would assume that when ‘SPARKS’ appears on two similar products they both come from the same source.”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“Richard Petty's Accu Tune” for automotive service centers specializing in engine tune-ups and oil changes, is likely to cause confusion with “Accutune” automotive testing equipment.”). In view of the foregoing, we find that Applicant’s mark MAGUIRE’S BOSTON ICED TEA CO. and design is similar to Opposer’s mark BOSTON ICE TEA in terms of appearance, sound, connotation and commercial impression. 3. Analyzing the factors. Because the marks are similar, the goods are identical and presumed to travel in the same channels of trade, we find that Applicant’s mark MAGUIRE’S BOSTON ICED TEA CO. and design for “beverages made of tea; beverages with a tea base; iced tea; tea; tea-based beverages” is likely to cause confusion with Opposer’s registered mark BOSTON ICE TEA for “tea-based beverages with fruit flavoring; tea; tea-based beverages.” Decision: Opposer’s motion to delete the Class 32 goods in Registration No. 4703971 is granted. The petition to cancel Registration No. 4703971 is dismissed. The opposition to Application Serial No. 85884091 is sustained and registration to Applicant is refused.