Café Rico, Inc.

Trademark Trial and Appeal Board

Aug 27, 2001

No. 75399381 (T.T.A.B. Aug. 27, 2001)

8/27/01 Paper No. 12
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Café Rico, Inc.
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Serial No. 75/399,381
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Janet G. Ricciuti, Esq. for Café Rico, Inc.

Zachary R. Bello, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Cissel, Hohein and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Café Rico, Inc. has filed an application to register
the mark "CAFÉ RICO" and design, as shown below below,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/399,381
2
for "coffee."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its goods, so resembles
the mark "RICO," which is registered for "coffee,"2 as to be
likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of

1 Ser. No. 75/399,381, filed on December 3, 1997, which alleges dates
of first use anywhere and in commerce of 1935 and claims, pursuant to
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), that the mark
has become distinctive of applicant's goods. A translation of the
mark is "COFFEE RICH" and the term "CAFÉ" is disclaimed. The mark is
lined for the colors red and yellow and is described as follows: "The
mark consists of the term 'CAFÉ RICO' appearing in black and the
combination of the colors red and yellow used on the packaging for the
goods. The dotted lining in the drawing is not a feature of the
mark."

2 Reg. No. 1,707,612, issued on the Supplemental Register on August 11,
1992, which sets forth dates of first use of 1950; affidavit §8
accepted. The English translation of the word "RICO" is "RICH."

Ser. No. 75/399,381
3
confusion analysis, two key considerations are the similarity of
the goods and the similarity of the marks.3 Here, inasmuch as
applicant's goods are identical to registrant's goods,4 the focus
of our inquiry is on the similarities and dissimilarities in the
respective marks when considered in their entireties. Moreover,
as pointed out in 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 (1994), "[w]hen marks would appear
on virtually identical goods ... , the degree of similarity [of
the marks] necessary to support a conclusion of likely confusion
declines."
Turning, therefore, to consideration of the respective
marks, applicant argues that, when considered in their
entireties, its mark "is unique in appearance[,] resulting in a
visually, phonetically, and conceptually distinguishable mark
from the registered mark." The latter, applicant asserts, is "a
normally understood and well recognized descriptive term, is
relatively weak," and is thus entitled, in keeping with its
registration on the Supplemental Register, to only a narrow

3 The court, in particular, pointed out that: "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."

4 Applicant, in fact, concedes in its brief that "[i]n this instance,
there is little room in which to debate the similarity or lack of
similarity between the goods of the parties as both have specified
'coffee' in their recitations [of goods] and neither party has entered
any limitations."
Ser. No. 75/399,381
4
scope of protection. In view thereof, and in light of "the well
known idiosyncrasy of coffee drinkers," who are assertedly
"loyal to and notoriously choosey [sic] in their brands of
coffee," applicant maintains that there is no likelihood of
confusion.
Citing, in particular, In re Hearst Corp., 982 F.2d
493, 25 USPQ2d 1238 (Fed. Cir. 1992), applicant insists that the
Examining Attorney impermissibly "has taken the position that
NEITHER the term CAFÉ nor the stylization used by Applicant in
its mark nor the packaging design need be given any weight in
the determination of confusion" and that it is the term "RICO"
which constitutes the dominant portion of applicant's mark.
While acknowledging that such portion is identical to
registrant's mark "RICO" and that the term "CAFÉ" is generic,
applicant "submits that if fair weight is given to the term CAFÉ
and the unique stylization used by Applicant [in its mark] and
its packaging design [therein], then the sound, sight and
commercial impression rendered by the marks are different and
confusion is not likely."
In addition, applicant argues that the sole element
common to the respective marks, namely, the Spanish term "RICO,"
means "rich" in English and thus is descriptive of both its
goods and those of registrant. Applicant consequently urges,
although without any evidentiary support, that:
Ser. No. 75/399,381
5
[T]he registered mark RICO is on the
Supplemental Register due to its descriptive
nature. Many in the coffee industry
describe their coffee as "rich" and in view
of the fact that most of the coffee consumed
in the United States originates in Spanish
speaking countries, many in the coffee
industry tend to describe their coffee as
"rico" or "rich". Due to its highly
descriptive nature and the natural
employment of the term by all in the
industry, the Board must recognize that the
registered mark has limited source
identifying qualities and is thus entitled
to a circumscribed scope of protection.

Comparing the mark at issue with these
factors in mind, it becomes apparent that no
consumer is likely to confuse Applicant's
mark with its highly distinctive design and
stylization with the simple term RICO.

Finally, and again notably without any evidentiary
support, applicant "submits that coffee purchasers exercise more
care and deliberation in their purchase of coffee than a
consumer seeking to purchase other groceries such as bread,
milk, or eggs." Although contending that it "does not believe
that coffee is expensive or that the purchase of coffee can be
elevated to a 'discriminating level'," applicant maintains that
"coffee is nonetheless a 'relatively' expensive item and [that]
coffee purchasers tend to be excessively attached to their brand
of choice." Applicant insists, therefore, that "in the
marketplace the likelihood of there being confusion between
Applicant's product and that of Registrant is unfounded."
Ser. No. 75/399,381
6
We concur, however, with the Examining Attorney that
confusion is likely from the contemporaneous use of the
respective marks in connection with coffee. Although we do not
fully agree with the Examining Attorney's analysis that, because
of the presence therein of the generic word "CAFÉ," applicant's
mark is necessarily dominated by the descriptive term "RICO,"5 we
nevertheless find that, when the respective marks are considered
in their entireties, they are substantially similar in sound,
appearance and connotation and are substantially identical in
commercial impression due to the shared term "RICO." Clearly,
when used in connection with its coffee, applicant's "CAFÉ RICO"

5 While, of course, marks must be compared in their entireties, it is
nevertheless the case that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, "there is nothing
improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided [that] the
ultimate conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.3d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). For instance, "that a particular feature is
descriptive or generic with respect to the involved goods or services
is one commonly accepted rationale for giving less weight to a portion
of a mark ...." 224 USPQ at 751. However, in this case, applicant's
mark consists of the generic word "CAFÉ," the descriptive term "RICO"
and the trade dress used in packaging its goods and it is only the
combination thereof which has acquired distinctiveness. Therefore, we
tend to disagree with the Examining Attorney that it is the
descriptive term "RICO" which is the dominant element of applicant's
"CAFÉ RICO" and design mark and is "the registrable portion" thereof,
to the exclusion of the generic word "CAFÉ" and the trade dress
elements and stylized manner of presentation of the entire mark. The
fact, however, that applicant's mark includes a generic term does
serve to distinguish this case from In re Hearst Corp., supra, upon
which applicant principally relies, in that the latter, in finding no
likelihood of confusion between the marks "VARGA GIRL" (with "GIRL"
disclaimed) and "VARGAS" for calendars, emphasized the contribution of
the descriptive, rather than generic, term "GIRL" in distinguishing
the such marks.
Ser. No. 75/399,381
7
and design mark, which literally translates as "COFFEE RICH,"
engenders substantially the same overall commercial impression
as registrant's "RICO" mark for coffee, which means "RICH" in
English and hence likewise denotes coffee which is rich or rich
coffee. Confusion as to the source or sponsorship of such
goods, when marketed under the respective marks, is therefore
likely to occur.
Moreover, we concur with the Examining Attorney that
the stylization and trade dress elements of applicant's mark are
insufficient to avoid a likelihood of confusion. Although
applicant stresses the "specialized design plus packaging dress,
unique to Applicant," of its mark, the Examining Attorney is
correct in noting that because registrant's mark is registered
in a typed format consisting of all capital letters, its rights
therein encompass the word "RICO" and are not limited to the
depiction thereof in any special form. See Phillips Petroleum
Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Instead, "[a]s the Phillips Petroleum case makes clear,"
when a registration for a word mark is in typed form, "then the
Board must consider all reasonable manners in which ... [the
word] could be depicted". INB National Bank v. Metrohost Inc.,
22 USPQ2d 1585, 1588 (TTAB 1992). Registrant's "RICO" mark must

Ser. No. 75/399,381
8
accordingly be regarded as including the display thereof in the
same stylized lettering as that in which applicant's "CAFÉ RICO"
and design mark appears, since such would appear to be a
reasonable manner of display and there is no showing by
applicant that the lettering format is unusual for coffee
products or otherwise "unique" as claimed by applicant.
Similarly, when the mark "RICO" is used on the packaging for
registrant's coffee, it could also employ a red and yellow motif
as part of its trade dress. The stylized lettering format of
applicant's mark and the red and yellow trade dress elements
therein consequently do not serve to distinguish such mark from
registrant's mark.
Furthermore, as the Examining Attorney also properly
observes, it has been consistently held that when a mark
consists of a word portion and a design portion, it is the word
portion which is more likely to be impressed upon a purchaser's
memory and to be used in calling for or asking about the goods
or services. See. e.g., In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987). We agree with the Examining
Attorney that, when considered in their entireties, it is the
literal element of applicant's "CAFÉ RICO" and design mark which
is the principal source-distinguishing portion thereof and,
hence, is entitled to greater weight in determining whether
there is a likelihood of confusion. Such portion, as previously
Ser. No. 75/399,381
9
indicated, plainly is substantially similar to registrant's
"RICO" mark in all significant respects.
As to applicant's contention that because registrant's
mark, as evidenced by its registration on the Supplemental
Register, is weak in that it is descriptive of coffee and thus
is entitled to only a limited scope of protection, the Examining
Attorney correctly notes that, as held in In re Clorox Co., 578
F.2d 305, 198 USPQ 337, 340-41 (CCPA 1978), not only is it the
case that "a mark registered on the Supplemental Register can be
used as a basis for refusing registration to another mark under
§2(d) of the Act," but there is no "requirement that citation of
marks on the Supplemental Register under §2(d) be limited to
marks identical to that sought to be registered." Specifically,
the court pointed out that:
No reason exists, however, for the
application of different standards to
registrations cited under §2(d). The level
of descriptiveness of a cited mark may
influence the conclusion that confusion is
likely or unlikely, ... but that fact does
not preclude citation under §2(d) of marks
on the Supplemental Register."

Id. at 341. It also can be usefully added that, as stated by
the court in King Candy Co. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 109 (CCPA 1974):
Confusion is confusion. The likelihood
thereof is to be avoided, as much between
"weak" marks as between "strong" marks, or
as between a "weak" and a "strong" mark.
Ser. No. 75/399,381
10

Consequently, even though registrant's "RICO" mark is merely
descriptive and thus is considered to be a weak mark, it is
still the case that applicant's contemporaneous use of its "CAFÉ
RICO" and design mark is likely to cause confusion, especially
since the respective marks project substantially the same
overall commercial impression and are used in connection with
identical products, namely, coffee. See, e.g., In re Hub
Distributing, Inc., 218 USPQ 284, 286 (TTAB 1983) [likelihood of
confusion found, even though marks at issue were weak, inasmuch
at such marks "evoke identical commercial impressions and are
used on identical and closely related goods"].
Lastly, as to applicant's unsupported assertion that
coffee purchasers exercise greater care and deliberation in
their selection of brands of coffee than, for example, other
staple items like bread, milk or eggs, suffice it to say that
not only is such contention speculative, but even if true, it is
still the case that the fact that consumers may exercise a
degree of discrimination in choosing among various coffee brands
"does not necessarily preclude their mistaking one trademark for
another" or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
Ser. No. 75/399,381
11
also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In
re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
We accordingly conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's
"RICO" mark for its coffee, would be likely to believe, upon
encountering applicant's substantially similar "CAFÉ RICO" and
design mark for its coffee, that such products emanate from, or
are sponsored by or associated with, the same source. In
particular, even among consumers who would notice the relatively
minor differences overall in the respective marks, it would
still be reasonable for them to believe, for example, that
applicant's "CAFÉ RICO" and design mark for its goods designates
a new or additional line of coffee emanating from, or sponsored
by, the same source as the coffee offered by registrant under
its "RICO" mark.
Decision: The refusal under Section 2(d) is affirmed.