Brasserie De Tahiti S.A.

Trademark Trial and Appeal Board

Feb 16, 2010

No. 77382656 (T.T.A.B. Feb. 16, 2010)

Mailed:
February 16, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brasserie De Tahiti S.A.
________

Serial No. 77382656
_______

Ronald E. Perez of The Soni Law Firm for Brasserie De
Tahiti S.A.

Giancarlo Castro, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pederson, Managing Attorney).
_______

Before Grendel, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Brasserie De Tahiti S.A. (applicant) has applied to
register the mark shown here on the Principal Register for
goods identified as “fermented malt beverages, namely beer
and ale” in International Class 32.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77382656
2
The application includes a disclaimer of “LAGER BEER” and
the following description of the mark: “The mark consists
of black letters ‘TAB’ followed by the red letter ‘U’ form
(sic) the word ‘TABU’ and a red rectangular box is placed
thereunder with the words ‘THE TIKI LAGER BEER’ in white
lettering therewithin.” The application is based on
applicant’s statement of its bona fide intention to use the
mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b).
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s mark is likely to be confused
with the registered mark Tiki Beer in standard characters
in Registration No. 3276829 for goods identified as “beer”
in International Class 32. The registration includes a
disclaimer of “BEER.” The registration issued on August 7,
2007.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
Serial No. 77382656
3
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods in
the application and the cited registration. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
As to the goods, the goods in the application and the
cited registrations need not be identical to find a
likelihood of confusion under Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant purchasers
mistakenly believing that the goods originate from the same
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade for those goods we must consider the goods as
identified in the application and registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
Serial No. 77382656
4
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”).
In this appeal applicant does not argue that the goods
differ. Obviously, the goods are identical, in part, and
otherwise closely related. This is an important fact which
applicant, by its silence as to the goods, tends to
discount. In this connection we note that, “… the degree
of similarity [between the marks] necessary to support the
conclusion of likely confusion declines” when the goods are
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Before comparing the marks, we will address arguments
applicant presents regarding the strength of the registered
mark. In its main brief applicant states, “Certainly, TIKI
is distinctive as well as the dominant term…” in the cited
mark. Applicant’s Brief at 10. In its reply brief
applicant takes a somewhat different tact and introduces
the meaning of “TIKI” from the Merriam-Webster Online
Serial No. 77382656
5
Dictionary, that is, “a wood or stone image of a Polynesian
supernatural power.” Reply Brief at 13. Applicant did not
provide a copy of the definition, but we have found the
same definition in Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) and we willingly take judicial notice of the
definition.1
Based on the definition, applicant states, “Therefore,
when used in connection with beer, the common term TIKI may
be perceived by average purchasers to mean that the beer
has a Polynesian origin. The term TIKI is strongly
suggestive of geographic origin.” Id. Then applicant
states, “Since the ‘829 mark [the mark in the cited
registration – Tiki Beer] consists only of terms suggestive
of geographic origin and the generic identifier of the
goods, while Appellant’s mark has an arbitrary and fanciful
term [TABU] that is prominently presented, Appellant
submits that under the ‘Meaning’ test as well, the two
marks would create sufficiently different commercial
impressions to avoid any likelihood of confusion….” Id. at
13-14. In the conclusion which follows, applicant then

1 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial No. 77382656
6
also argues that TIKI acts only as a weak source indicator
in its own mark.
We address this issue at the outset, and before
comparing the marks, to dispel any notion that the
registered mark Tiki Beer is suggestive or otherwise weak.
We reject applicant’s leap of logic in asserting that
relevant purchasers would perceive TIKI as a geographical
term in either the cited mark or applicant’s mark. We have
no evidence to support that conclusion. More importantly,
we have no evidence that TIKI is used by anyone, other than
the registrant, in relation to beer. Cf. Knight Textile
Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1316 (TTAB
2005). According, we will proceed on the basis that the
cited registered Tiki Beer mark is not a weak mark, but a
mark of ordinary strength entitled to all presumptions
accorded registered marks under Trademark Act Section 7(b),
15 U.S.C. § 1057(b).
We now turn to the comparison of the marks. In our
comparison, we must consider the appearance, sound,
connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Serial No. 77382656
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In its arguments, applicant repeatedly refers to
principles governing the construction and comparison of
marks under Section 2(d). Applicant cautions against
dissecting the marks and emphasizes the need to view the
marks in their entireties, citing California Cooler, Inc.
v. Loretto Winery, Ltd., et al., 774 F.2d 1451, 227 USPQ
808 (9th Cir. 1985); Spice Islands, Inc. v. The Frank Tea
and Spice Company, 505 F.2d 1293, 184 USPQ 35 (CCPA 1974)
and other cases. At the same time applicant urges us to
recognize that certain components of a mark, in particular
TABU in the case of its mark, may be dominant, citing Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983) and other cases. Applicant is
most emphatic in warning against reliance on “mechanical
rules of construction” and in urging a case-by-case
approach in our comparison of the marks, citing Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281 (Fed. Cir. 1984) and other cases.
Applicant’s Brief at 8 (underlining in the original).
Applicant reiterates the danger in reliance on “mechanical
rules” in its reply brief. Reply Brief at 6-7.
In applying the governing law to this case applicant
argues that TABU is the dominant element in its mark, and
that both TABU and the design elements are more important
Serial No. 77382656
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than the phrase “THE TIKI LAGER BEER.” Applicant argues
further that when the mark are viewed in their entireties,
its mark differs from the cited mark in appearance, sound,
connotation and commercial impression. Applicant takes the
Examining Attorney to task arguing that the Examining
Attorney focused only on the common element, TIKI, and
failed to consider all factors required in the comparison.
Applicant also argues that the Examining Attorney failed to
provide either an adequate explanation or evidence to
support his conclusion that the marks are similar.
In particular, applicant argues, “Applicant’s mark
consists of 5 words, with the most distinct and dominant
portion being the term ‘TABU.’ The ’829 mark [the cited
Tiki Beer mark] comprises 2 words of which one is generic
and the other identifies the goods.” Applicant’s brief at
5. Later applicant continues along the same lines:
The term ‘TABU’ takes almost 90 percent of
the space of the entire mark of Appellant. It is
almost 10 times bigger in height, and 5 times
bigger, both in width and thickness of the font,
than the rest of the terms, ‘THE TIKI LAGER
BEER.’ To further accentuate the already
unmistakable conspicuousness of the term,‘TABU,’
arising from its oversize, black color is clothed
on the letters ‘TAB’ and red color on the letter
‘U.’ Moreover, the term ‘TABU’ is geometrically
arranged in an upper layer so as to further add
to the prominence and more readily draw the
attention of the viewer to create (sic) strongest
impression in Appellant’s mark. …

Serial No. 77382656
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By contrast, the terms,‘THE TIKI LAGER
BEER,’ are disproportionately small, are located
in a thin small rectangular box under the
humungous term,‘TABU.’ Further, the common term
‘TIKI,’ is embedded amidst other inconspicuous
descriptive terms, ‘THE’ and ‘LAGER BEER.’ The
term ‘TIKI’ is highly de-emphasized in appearance
and sight, and in contrast with the term ‘TABU’
is barely noticeable.

Id. at 10-11 (underlining in original).

We unequivocally endorse the approach applicant
suggests in its discussion of the cases, in particular, the
need to proceed case by case and to consider the marks in
their entireties, and all aspects of the marks. When we
view the marks in this case in their entireties, we
conclude that the marks are confusingly similar.
We readily acknowledge, as applicant argues, that
there are obvious differences between the marks in
appearance and sound. Applicant has identified the
differences in minute detail. We also acknowledge that
TABU is a dominant, if not the dominant, element in
applicant’s mark.
On the other hand, the marks are somewhat similar in
connotation. The presence of TIKI in both marks may
connote a similar exotic or tropical quality in both marks;
TABU may convey a similar connotation. The critical point
of similarity, however, is in the commercial impression of
the marks. In this case, the similarity in commercial
Serial No. 77382656
10
impression overrides all of the identified differences and
dictates the conclusion that the marks are similar when
viewed in their entireties.
Although applicant has gone to great lengths to warn
against a mechanical approach, applicant’s analysis is
slavishly mechanical. Applicant obsesses over the
quantitative and nearly excludes the qualitative from the
equation. A balanced analysis focused on the meaning and
commercial impression of applicant’s mark leads to the
conclusion that a potential purchaser of applicant’s beer,
who is familiar with the Tiki Beer mark, is likely to
believe that applicant’s beer, referred to as A TIKI LAGER
BEER in applicant’s mark, is from the same source as Tiki
Beer.
While the phrase A TIKI LAGER BEER may be given far
less prominence in the display of applicant’s mark than
other elements, the phrase is there and it conveys an
important message. TIKI, like TABU, is distinctive and
must be viewed in that light. We categorically reject
applicant’s implication that TIKI is too small or otherwise
too insignificant to matter in applicant’s mark. In fact,
TIKI may be viewed somewhat like a house mark in this
context, further connecting/confusing TABU, a product mark,
with the cited, registered Tiki Beer mark. Cf. In re
Serial No. 77382656
11
Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS
MVP for casino services held likely to be confused with MVP
for casino services offered to preferred customers
identified by special identification cards). In other
words, consumers may mistakenly perceive applicant’s “A
TIKI LAGER BEER” reference as an indication that TABU is a
product line from the same source as registrant’s Tiki
Beer.
Accordingly, when we consider the particular facts of
this case and view the marks in their entireties, we
conclude that the marks are confusingly similar due
principally to the similarity in connotation and commercial
impression.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion between Applicant’s TABU – THE TIKI
LAGER BEER and Design mark when used in connection with
“fermented malt beverages, namely beer and ale” and the
cited Tiki Beer mark when used in connection with “beer.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).