Chaim Lowensteinv.Morrison Distribution & Marketing, Inc.

Trademark Trial and Appeal Board

May 2, 2008

No. 92045446 (T.T.A.B. May. 2, 2008)

Mailed: May 2, 2008
PTH/JDD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Chaim Lowenstein
v.
Morrison Distribution & Marketing, Inc.
_____

Cancellation No. 92045446
_____

Daniel Earle of Shlesinger, Arkwright & Garvey LLP for Chaim
Lowenstein.

Robert Trent Pipes of Dunlap, Codding & Rogers for Morrison
Distribution & Marketing, Inc.
_____

Before Hairston, Rogers and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Chaim Lowenstein has petitioned to cancel the
registration owned by Morrison Distribution & Marketing,
Inc. for the mark “24-7 GREAT COFFEES” (GREAT COFFEES is
disclaimed) for “coffee.”1 As his grounds for cancellation,
petitioner alleges that prior to both the filing date of the

1 Reg. No. 2837070, issued on April 27, 2004 from an intent-to-
use application filed on September 9, 2002, which sets forth
dates of first use of October 12, 2003.
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Cancellation No. 92045446
2
underlying application for registration of such mark and
respondent’s claimed dates of first use thereof, petitioner
adopted and used the mark “24 7 COFFEE” for coffee and
related goods; that, in addition thereto, petitioner has
filed an application to register the mark “24 7 COFFEE –
CLOSEST TO THE ROAST – TAKING AMERICA ONE CUP AT A TIME”
(COFFEE is disclaimed) for “roasted coffee, green coffee
beans, teas, and beverages made of coffee;”2 that
petitioner’s application has been refused registration under
Section 2(d) of the Trademark Act in light of respondent’s
registration for its mark; that there are “similarit[ies]
between Petitioner’s mark and Registrant’s mark”; that the
goods of the respective parties are “related”; and that the
contemporaneous use of the parties’ marks in connection with
their respective goods is likely to cause confusion, to
cause mistake, or to deceive.
Respondent, in its answer, has denied the salient
allegations of the petition to cancel.3

2 Ser. No. 78537563, filed on December 23, 2004, which alleges
dates of first use of November 1, 1998, and first use in commerce
of December 27, 1999.
3 As affirmative defenses, respondent asserts that petitioner
lacks standing, does not have superior rights, and the petition
for cancellation fails to state a claim. These, however, are not
true affirmative defenses, but rather are assertions that relate
to respondent’s position that there is no likelihood of
confusion. Further, respondent asserts as an affirmative defense
that “the petition is barred in whole or in part by petitioner’s
unclean hands and misuse of trademark rights.” It appears from
respondent’s brief that this unclean hands defense is based on
its contention that petitioner intentionally misused the
registration symbol in connection with his mark. A review of
Cancellation No. 92045446
3
EVIDENTIARY OBJECTIONS
Two evidentiary matters require consideration prior to
our discussion of the merits of this case.
a. Exhibits to Petitioner’s Trial Testimony Deposition
Respondent has objected to fifteen exhibits and the
testimony related thereto introduced during the testimony
deposition of petitioner, Chaim Lowenstein. Specifically,
respondent objects to Exhibits 1-3, 7, 8, 10-18 and 21 and
the testimony related thereto. Respondent first objected to
the introduction of these exhibits and all of the lines of
testimony related to such exhibits during the Lowenstein
deposition. Respondent maintains that these exhibits were
the subject of respondent’s Interrogatory Nos. 2, 7, 10, 13,
14 and 21, and Production Requests Nos. 9, 12 and 13.
Relying on TBMP § 527.01 (2d ed. rev. 2004), respondent
maintains that “[b]ecause these documents were not provided
to Registrant during discovery Petitioner should be estopped
from thereafter relying upon them and they should be
excluded from the evidence considered in this proceeding.”
Petitioner, on the other hand, states that in response
to Production Requests Nos. 9 and 12, he stated that

petitioner’s testimony, however, reveals that his use of the
registration symbol was inadvertent. Consequently, the assertion
of intentional misuse of the registration symbol has not been
proved. See generally 3 McCarthy on Trademarks and Unfair
Competition §19:146 (4th ed. 2008).
Cancellation No. 92045446
4
documents would be produced, and that such documents were
made available for inspection and copying pursuant to 37
C.F.R. § 2.120(d). Petitioner maintains that respondent
made no effort to inspect and copy the documents as they are
kept in petitioner’s usual course of business. Petitioner
states that he objected to Production Request No. 13 on the
ground that it was not relevant. Petitioner maintains that
respondent never challenged this objection, and in any
event, none of petitioner’s exhibits at issue are responsive
to this request.
Insofar as Interrogatory Nos. 7, 10, 13 and 21 are
concerned, petitioner states that he responded to each of
these interrogatories, and that respondent’s objection is
merely a complaint concerning the adequacy of the responses.
Petitioner argues that respondent failed to follow the
proper procedure for resolving such issues prior to trial,
namely by filing a timely motion to compel.
With respect to Interrogatory No. 2, petitioner states
that he objected to this interrogatory on the ground that it
was overbroad and unduly burdensome. Again, petitioner
argues that respondent failed to follow the proper procedure
for resolving such issues prior to trial, namely by filing a
timely motion to compel.
Insofar as Interrogatory No. 14 is concerned,
petitioner states that he objected to this interrogatory on
Cancellation No. 92045446
5
the ground that it sought confidential, proprietary
information. Again, petitioner argues that respondent
failed to follow the proper procedure for resolving such
issues prior to trial, namely by filing a timely motion to
compel. Petitioner states that no protective order was ever
entered in this case, but he ultimately determined that
making the information of record was more important than
maintaining the confidentiality of such information.
TBMP § 527.01 provides that “[a] party that responds to
a request for discovery by indicating that it does not have
the information sought, or by stating objections thereto,
may be barred by its own action from later introducing the
information sought in the request as part of its evidence on
the case, providing that the propounding party raises the
matter by objecting to the evidence in question on that
ground, and preserves the objection in its brief on the
case… .” On the other hand, TBMP § 523.04 provides that
“[i]f a party that served a request for discovery receives a
response thereto which it believes to be inadequate, but
fails to file a motion to test the sufficiency of the
response, it may not thereafter be heard to complain about
the sufficiency thereof.”
In this case, respondent filed a motion to compel
production of the documents and responses to the
interrogatories at issue. The Board, in an order issued
Cancellation No. 92045446
6
January 25, 2007, denied the motion as untimely. As
indicated in that order, a motion to compel must be filed
prior to the opening of the first testimony period. 37
C.F.R. § 2.120(e)(1).
Under the circumstances, respondent cannot now be heard
to complain that the requested documents were not produced,
or that the interrogatory responses were inadequate or
incomplete. See Linville v. Rivard, 41 USPQ2d 1731, 1733
(TTAB 1996); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1651, 1656 (TTAB 2002). So as to be perfectly clear,
this is not a case where the objections to the
interrogatories and request for production of documents were
of a nature which would have led respondent to believe that
no such documents existed.
In view thereof, respondent’s objections are overruled.
Lowenstein deposition Exhibit Nos. 1-3, 7, 8, 10-18 and 21
are accepted and made part of the record. Similarly, the
testimony related thereto will be considered in reaching our
decision herein.
b. Exhibit E to Respondent’s Notice of Reliance
Petitioner has objected to Exhibit E to Respondent’s
Notice of Reliance, on the ground that it is not proper
subject matter for a Notice of Reliance. Exhibit E is
respondent’s answer to Petitioner’s Interrogatory No. 5.

Cancellation No. 92045446
7
37 C.F.R. § 2.120(j)(5) provides that:
[I]f fewer than all of the … answers to
interrogatories … are offered in evidence by the …
inquiring party, the … responding party may
introduce under a notice of reliance any other …
answers to interrogatories … which should in
fairness be considered so as to make not misleading
what was offered by the … inquiring party. The
notice of reliance filed by the … responding party
must be supported by a written statement explaining
why the … responding party needs to rely upon each
of the additional … discovery responses…, and absent
such statement the Board, in its discretion, may
refuse to consider the additional written …
responses.

In this case, petitioner relied on respondent’s answer
to petitioner’s Interrogatory No. 2. This interrogatory
asked respondent to “Identify the date of use for each [of
the products marketed or sold by Respondent under
Respondent’s mark]. If there have been any cessations of
use for any of the products identified, state the period of
non-use and reasons therefore.” Respondent answered this
interrogatory by providing a chart identifying its products
and the date of first use of the mark on each product.
Petitioner’s Interrogatory No. 5 asks, “State whether
Registrant commissioned or performed any search, formal or
informal, prior to the selection, creation or application
for federal registration of Registrant’s mark; and, if so,
describe with particularity the results of the search or
searches, and identify when each search was conducted.”
Respondent answered this interrogatory by providing
Cancellation No. 92045446
8
petitioner with the results of a trademark search performed
by a private company on respondent’s behalf.
Respondent offers the following explanation as to the
need to use its response to petitioner’s Interrogatory No.
5:
… the [results of the search performed by the
private company] revealed that the registration
status of the domain name claimed by Petitioner,
www.247coffee.com, was “Deleted or On Hold.” Id. at
page 137. Thus, petitioner could not have been
actively operating a website, or conducting
interstate commerce, at that domain.
…
Interrogatory No. 5 should, in fairness, be
considered along with Interrogatory No. 2 because
both are directly relevant to the use of the marks
at issue, or lack thereof, in interstate commerce;
the lack or cessation of use of Petitioner’s claimed
mark; the continuous use of Registrant’s Mark; and
the issue of priority of use.

(Brief, p. 20)
Respondent obviously misapprehends CFR § 2.120(j)(5).
Interrogatory No. 2 inquires as to respondent’s use (and any
cessation) of use of its mark on its goods. Interrogatory
No. 5, on the other hand, inquires as to whether respondent
commissioned or performed a trademark search. Respondent
cannot rely on its own response to Interrogatory No. 5 in an
attempt to introduce evidence it obtained concerning the
purported status of petitioner’s domain name registration.
In short, respondent’s response to Interrogatory No. 5
is not necessary to “avoid an unfair interpretation of” the
response to Interrogatory No. 2. See Heaton Enterprises of
Cancellation No. 92045446
9
Nevada, Inc. v. Lang, 7 USPQ2d 1842, 1844 n. 5 (TTAB
1988)(noting “it is the purpose of “[the fairness provision
of Rule 2.120(j)(5)] to allow an answering party to avoid an
unfair interpretation of the responses relied on by the
propounding party… .”).
Accordingly, petitioner’s objection to Exhibit E of
respondent’s notice of reliance is sustained, and this
exhibit will not be considered in reaching our decision
herein.4
THE RECORD
The record consists of the pleadings; the file of the
involved registration; the trial testimony deposition of
petitioner, Chaim Lowenstein, with accompanying exhibits;
petitioner’s notice of reliance upon respondent’s responses
to certain of petitioner’s interrogatories and certain of
petitioner’s first request for admissions; the trial
testimony deposition of Michael Morrison, president and sole
owner of respondent, Morrison Distribution & Marketing.
Inc.; and respondent’s notice of reliance on two Florida
Department of State official records, and two New York State
Department of State official records.
Both parties have filed briefs.

4 We add, however, that had we considered Exhibit E, it would not
change our decision in this proceeding.
Cancellation No. 92045446
10
FACTS
(1) Petitioner, Chaim Lowenstein began using the mark
24 7 COFFEE in 1998. Lowenstein dep. at 11;
Petitioner’s Exhibit No. 9.
(2) At that time, the mark was used primarily in
connection with coffee. Lowenstein dep. at 11.
(3) Petitioner has continuously used the mark in
connection with coffee since 1998. Lowenstein dep.
at 11; Petitioner’s Exhibit No. 17.
(4) At the time petitioner began using the mark, he
performed market research to determine potential
customers and geographic markets for his coffee.
Lowenstein dep. at 13-17; Petitioner’s Exhibit No.
2.
(5) In March 2000, petitioner performed a search of
the U.S. Patent and Trademark Office records, “all
yellow pages, all white pages, called directory
assistance for all major area codes, contacted
various major database compilers and … contacted
various states to see if there were any
corporations, limited partnerships [or] DBAs that
were in the name of 24 7 Coffee or anything that was
similar.” Lowenstein dep. at 18; Petitioner’s
Exhibit No. 3.
Cancellation No. 92045446
11
(6) On February 17, 2000, petitioner created a
corporation in the state of Delaware under the name
247coffee.com. Lowenstein dep. at 19; Petitioner’s
Exhibit No. 4.
(7) On January 4, 2002, petitioner created a limited
liability company in the state of Michigan named 247
Coffee LLC. Lowenstein dep. at 19; Petitioner’s
Exhibit No. 5.
(8) Petitioner allowed the Delaware corporation to
dissolve after the creation of the Michigan limited
liability company. Lowenstein dep. at 19.
(9) 247 Coffee LLC is an active limited liability
company in the state of Michigan. Lowenstein dep.
at 20; Petitioner’s Exhibit No. 6.
(10) Petitioner has operated 247coffee.com and 247 Coffee
LLC from locations in Georgia, New York and Florida.
Lowenstein dep. at 96-115. Petitioner’s Exhibit No.
11.
(11) Petitioner controls the quality of the products sold
under the mark by getting samples from potential
sources and checking the quality and taste.
Lowenstein dep. at 20; Petitioner’s Exhibit No. 18.
(12) Petitioner takes steps to improve the products
offered in connection with the mark by researching
the best practices for the production of the goods,
Cancellation No. 92045446
12
talking to customers, and researching the industry.
Lowenstein dep. at 37-38.
(13) Petitioner’s customers may order the products by fax
or e-mail. Lowenstein dep. at 24.
(14) Petitioner’s products are sold to individuals,
offices, businesses that offer coffee service,
coffee shops, and to fundraising organizations.
Lowenstein dep. at 28.
(15) Petitioner markets the products by mailing
promotional materials, e-mail promotions, product
giveaways, and through the Internet. Lowenstein
dep. at 30-32; Petitioner’s Exhibit Nos. 12, 13, 14,
15 and 16.
(16) Petitioner also places the mark on address labels,
business cards, and invoices, and sells collateral
merchandise, such as t-shirts and coffee mugs, and
provides information on brewing and storing coffee.
Lowenstein dep. at 11, 25-26, 29 and 34.
(17) Orders for petitioner’s products are submitted via
fax or e-mail, the order is transmitted to
“fulfillment” companies, who then roast the product
and, if applicable, grind the coffee beans, place
the goods in packaging, weigh it, seal it, and ship
it. Sometimes promotional items are included, along
Cancellation No. 92045446
13
with a packing slip and an invoice. Lowenstein dep.
at 24-25.
(18) Petitioner’s sales have increased each year since
1998. $41,500 in 1998; $102,700 in 1999; $209,600 in
2000; $463,000 in 2001; $946,00 in 2002; $1,260,400
in 2003; $1,643,500 in 2004; and $1,996,800 in 2005.
Lowenstein dep. at 36.
(19) Petitioner’s advertising expenses have also
increased, through 2002, but declined some since
then. $67,000 in 1998; $92,000 in 1999; $115,000 in
2000; $117,000 in 2001; $121,000 in 2002; $101,200
in 2003; $101,900 in 2004; and $103,000 in 2005.
Lowenstein dep. at 37.
(20) Petitioner owns application Serial No. 78537563,
filed on December 23, 2004, for the mark 24 7 COFFEE
– CLOSEST TO THE ROAST – TAKING AMERICA ONE CUP AT A
TIME. On August 2, 2005, this application was
refused registration on the ground of a likelihood
of confusion between petitioner’s mark and the marks
in Registration Nos. 2837070 (involved herein) and
2848710.5 Petitioner’s Exhibits Nos. 19 and 20.

5 Reg. No. 2848710 was cancelled under Section 18 on August 16,
2006 pursuant to the Board’s order in Cancellation proceeding
92045601.
Cancellation No. 92045446
14
THE ISSUES
The issues to be decided in this proceeding are
standing, priority of use, and likelihood of confusion.
In Board proceedings regarding the registrability of marks,
our primary reviewing Court has held that the plaintiff must
establish his pleaded case as well as his standing, and must
generally do so by a preponderance of the evidence. See
Cunningham v. Laser Golf Corp., 55 USPQ2d 1842, 1848 (Fed.
Cir. 2000). Thus, petitioner bears the burden of proving by
a preponderance of the evidence his standing, and his claim
of priority and likelihood of confusion.
STANDING AND PRIORITY
Standing requires only that petitioner have a real
interest in this proceeding. See Section 14 of the
Trademark Act, 15 U.S.C. § 1064; and Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). Petitioner may establish his standing by proof
of ownership and use of the 24 7 COFFEE mark.
Insofar as priority is concerned, in order for
petitioner to prevail on his claim of likelihood of
confusion, petitioner must establish prior rights in the 24
7 COFFEE mark. In this regard, we note that the earliest
date upon which respondent can rely for purposes of priority
is the September 9, 2002 filing date of the intent-to-use
application which matured into its involved registration.
Cancellation No. 92045446
15
Petitioner, therefore, may establish his priority by proving
that on or before September 9, 2002, he had made use of the
24 7 COFFEE mark in connection with coffee.
Respondent maintains that petitioner has not
demonstrated his standing or priority as to the mark 24 7
COFFEE. First, respondent argues that “[p]etitioner’s
deposition testimony was not clear, consistent and free from
uncertainty,” citing Longini Shoe Mfg. Co. v. Ratcliff, 27
C.C.P.A. 784, 788 (CCPA 1939)(“[W]here cancellation must
rest upon the testimony of a single witness such testimony
should at least be clear, consistent and free from
uncertainty.”). Second, respondent argues that petitioner
does not own the 24 7 COFFEE mark or abandoned the mark when
the Delaware corporation, 247Coffee.com Inc., and/or the
Michigan limited liability company, 24 7 Coffee LLC, were
formed and began using the mark.
We find, however, that the record demonstrates that
petitioner made initial sales of coffee under the mark 24 7
COFFEE in 1998 and that such sales have been followed by
activities proving continuous use of the mark.
Petitioner testified that he first used the mark 24 7
COFFEE in connection with coffee in 1998.6 Petitioner’s

6 Lowenstein dep. at 11.
Cancellation No. 92045446
16
Exhibit No. 9 was identified as “original packaging that
[petitioner] had used.”7 The packaging bears a label that
displays the mark and additional wording, “24 7 COFFEE –
Closest to the Roast. Taking America One Cup At A Time.
COLUMBIAN SUPREMO Auto Drip Grind 16 Oz/1 Pound.”
Respondent’s cross-examination elicited that this was the
front label used in 1998.8
Petitioner testified that sales of coffee under the
mark 24 7 COFFEE mark have been continuous.9 Petitioner’s
Exhibit No. 17 consisted of eleven invoices dated May 2,
1999 through January 20, 2006. On cross-examination,
respondent elicited from petitioner that: the invoices were
kept electronically and reprinted on current stock paper
forms;10 and, some of the sales were to friends and
acquaintances.11 Petitioner’s testimony is clear and
consistent as to how the invoice records are kept
electronically and were printed on a current paper stock.
With regard to some sales being made to friends and
acquaintances, it is not uncommon for or unreasonable to
expect a certain amount of initial sales for a small start-
up business to be made to family and friends. However,
petitioner also testified to increasing sales and

7 Lowenstein dep. at 23.
8 Id. at 57-58.
9 Id. at 11.
10 Id. at 78-79.
11 Id. at 77-86.
Cancellation No. 92045446
17
substantial advertising expenditures each year since.12
We find that petitioner has demonstrated, by a
preponderance of the evidence, use of the mark 24 7 COFFEE
as of 1998 - a date prior to the earliest date respondent
can rely on, September 2, 2002, and that initial sales were
followed by activities proving continuous use of the 24 7
COFFEE mark. See National Bank Book Co. v. Leather Crafted
Products, Inc., 218 USPQ 826, 828 (TTAB 1993) [oral
testimony may be sufficient to prove the first use of a
party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted];
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ
305, 316 (TTAB 1979) [oral testimony may be sufficient to
establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value].
Further, we find that petitioner has established that
he is the owner of the 24 7 COFFEE mark. As discussed
infra, the record shows that petitioner first used the 24 7
COFFEE mark on coffee in 1998 and that petitioner

12 Id. at 36-37.
Cancellation No. 92045446
18
subsequently formed the Delaware corporation 247coffee.com
and the Michigan company 247 Coffee LLC to market his goods.
Although there is no evidence that either the Delaware
corporation or the Michigan company were ever granted an
express license to use the mark, the evidence is sufficient
to presume at least implied licenses to the corporation and
the limited liability company. Indeed, petitioner testified
on cross-examination that, upon “[thinking] it through,”
247Coffee.com and 247Coffee LLC were licensees.13 See
McCarthy, supra at § 18:43.1 and e.g., University Book Store
v. University of Wis. Bd. Of Regents, 33 USPQ2d 1385, 1396
(TTAB 1994). Further, petitioner testified that he
controlled all aspects of the nature and quality of the
goods. The entity which controls the nature and quality of
the goods or services provided under the mark is presumed to
be the owner. We conclude, therefore, that the record
supports a finding that petitioner is the owner of the 24 7
COFFEE mark and that use of the mark by the Delaware
corporation 247coffee.com and the Michigan company 247
Coffee LLC inured to petitioner.
In sum, we find that petitioner has demonstrated his
standing, i.e., a real interest in this proceeding, and

13 Lowenstein dep. at 134.
Cancellation No. 92045446
19
priority with respect to the mark 24 7 COFFEE for coffee.14
LIKELIHOOD OF CONFUSION
In determining the legal question of likelihood of
confusion, the Board must consider all of the probative
facts in evidence which are relevant to the factors bearing
on likelihood of confusion as identified in In re E.I. du
Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973).
Similarity Between the Goods; Channels of Trade; Potential
Consumers

The first DuPont factors we consider are whether the
goods of the petitioner and the respondent, the channels of
trade through which the goods travel, and the potential
consumers for the goods are the same or related.
Respondent argues that “… the goods … and channels of
trade … are substantially different… .” Respondent argues
that its goods are primarily for the convenience store
industry, and are only available to consumers as brewed cups

14 We note respondent’s contention that 247 Coffee LLC’s use of
the 24 7 COFFEE mark in New York and Florida violates the laws of
such states, and is therefor unlawful. Respondent has submitted
certificates from each state indicating that the records thereof
do not disclose an application for incorporation or the existence
of a corporation with the name 247 Coffee LLC. Apart from the
fact that respondent has offered no evidence which establishes
that it is unlawful for an entity to do business in New York or
Florida if the entity is not incorporated there, it is not within
the province of this Board to determine whether such activity is
a violation of a state’s laws. Cf. American-International Travel
Service, Inc. v. Aits, Inc., 174 USPQ 175 (TTAB 1972). [Board
held that it was without jurisdiction to determine whether the
acts of an opposer constituted a violation of a criminal
statute].
Cancellation No. 92045446
20
of coffee through a convenience store that has purchased
respondent’s goods. Citing to the deposition of petitioner,
respondent argues that petitioner’s goods are marketed as
ground or whole bean coffee packages directly to consumers
as a custom roasted specialty coffee.
Respondent, however, may not restrict the scope of the
goods in the registration by extrinsic argument or evidence.
Rather, the nature and scope of the respondent’s goods must
be determined on the basis of the goods recited in the
registration. See, e.g., Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Turning to the channels of trade and class of
purchasers, “regardless of what the record may reveal as to
the particular nature of [a registrant’s] goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed,” the determination of
whether there is a likelihood of confusion must be based on
the goods as they are identified in the registration. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1786-1787 (Fed. Cir. 1990). The
presumption under Trademark Act Section 7(b), 15 U.S.C.
§1057(b), is that use of the mark extends to all goods
identified in the registration and that the registrant
operates in all normal channels of trade and reaches all
classes of purchasers of the identified goods. In re
Cancellation No. 92045446
21
Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); see TMEP
§1207.01(a)(iii).
Respondent’s goods are identified in the registration
as “coffee,” and, therefore, must be presumed to encompass
all types of coffee, including whole bean and ground roasted
specialty coffees, i.e., the goods shown by the record to
have been sold by petitioner under his mark. Similarly, the
presumption is that the respondent’s goods travel through
all normal channels of trade for coffee, including direct
marketing to end consumers, just as petitioner’s goods are
directly marketed to consumers. In this case, the goods,
channels of trade, and classes of purchasers of the parties’
goods are identical or overlapping.
Where the goods of the respective parties are
identical, the degree of similarity between the marks
required to support a finding of likelihood of confusion is
not as great as would be required with diverse goods.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Similarity Between the Marks
Next we consider the du Pont factor of the similarity
between petitioner’s mark 24 7 COFFEE and respondent’s mark
24-7 GREAT COFFEES. This factor requires an examination of
the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
Cancellation No. 92045446
22
commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The test under this
factor is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 743 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Respondent’s mark is 24-7 GREAT COFFEES. Petitioner’s
mark is 24 7 COFFEE. The term GREAT COFFEES is descriptive
and disclaimed in respondent’s mark. Similarly, the term
COFFEE is descriptive in petitioner’s mark. Thus, it is the
24-7 and 24 7 components in the respective marks that are
Cancellation No. 92045446
23
entitled to more weight in our likelihood of confusion
analysis.
We find that the marks are highly similar in
appearance, sound, connotation and commercial impression.
The respondent’s mark incorporates the petitioner’s entire
mark and modifies it by pluralizing the term COFFEE and
adding the laudatory term GREAT and a hyphen between the
numbers 24 and 7.
These minor differences are outweighed by the
similarities of the marks. Both marks begin and end with
similarly sounding and appearing terms, 24 7 and 24-7, and
COFFEE and COFFEES. The dominant features of the marks, 24
7 and 24-7, are phonetically identical and create the same
overall commercial impression, and the marks create nearly
identical overall commercial impressions.
Conditions Under Which and Buyers to Whom Sales are Made
The Board has previously found that coffee products and
services “are neither expensive nor complicated, and may be
purchased on impulse by ordinary consumers.” Starbucks U.S.
Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB 2006).
“[B]ecause retail coffee and tea beverages and coffee and
tea itself are inexpensive products and may be purchased on
impulse and without care, consumers devote limited attention
to the purchase of such goods and services, and thus are
more susceptible to confusion.” Id.
Cancellation No. 92045446
24
Actual Confusion
Respondent argues that petitioner has offered no
evidence of actual confusion and this suggests that
confusion is unlikely. The absence of any instances of
actual confusion is a meaningful factor only where the
record demonstrates that there has been an opportunity for
such confusion to occur. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992); and Chemetron Corp. v.
Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
Respondent has offered no information as to the extent of
its sales or advertising. Moreover, respondent maintains
that the parties’ products are offered in different trade
channels.15 Under the circumstances, we unable to conclude
that there has been an opportunity for incidents of actual
confusion to occur. In any event, it is not necessary to
prove actual confusion in order to make out a prima facie
showing of likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990).
Conclusion
In view of the foregoing, we find that the
contemporaneous use of the substantially similar marks 24-7

15 In analyzing actual confusion, we look to what occurs in the
marketplace. In contrast, as discussed infra, in analyzing
likelihood of confusion, we look to the identification of goods
in respondent’s registration which does not contain any
limitations in terms of trade channels.
Cancellation No. 92045446
25
GREAT COFFEES and 24 7 COFFEE in connection with legally
identical goods, coffee, is likely to cause confusion,
mistake or to deceive.
Decision: The petition to cancel is granted.