Coffee Express Co.v.Janelco Global, Inc.

Trademark Trial and Appeal Board

Apr 3, 2002

No. 92028360 (T.T.A.B. Apr. 3, 2002)

4/3/02
Paper No. 26
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Coffee Express Co.
v.
Janelco Global, Inc.
_____

Cancellation No. 28,360
_____

William M. Hanlon of Young & Basile, P.C. for Coffee
Express Co.

Kenneth L. Tolar, Esq., for Janelco Global, Inc.
_____

Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On December 4, 1998, Coffee Express Co. filed a
Petition to Cancel Registration No. 2,081,278, which
issued on the Principal Register to Janelco Global, Inc.
on July 22, 1997 for the mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 28,360
2

for “shelf-stable liquid coffee concentrate and powdered
coffee,” in Class 30. The registration is based on
registrant’s claim of use of the mark in commerce in
connection with these goods since October 1, 1995. The
descriptive word “coffee” is disclaimed apart from the
mark as shown in the registration.
As grounds for cancellation, petitioner alleged that
it is in the business of roasting and selling specialty
coffee beans, coffees and associated goods; that since at
least as early as March 31, 1980, petitioner and its
predecessor have been using the marks “COFFEE EXPRESS,”
“COFFEE EXPRESS” and design, “COFFEE EXPRESS COMPANY” and
other marks with “COFFEE EXPRESS” as the dominant feature
in connection with petitioner’s coffee and coffee beans;
that on April 13, 1987, petitioner’s predecessor applied
to register the mark shown below

for “coffee,” but that registration was refused under
Section 2(d) of the Lanham Act based on Registration No.
1,395,742 for the mark “COFFEE EXPRESS” for “non-electric
coffee pots,” in Class 21, which had been issued to Dante
Bedini on June 3, 1986; that petitioner continued to use
Cancellation No. 28,360
3
its mark in connection with its coffee products, as well
as on related items; that petitioner purchased the
registration cited as a bar to its application when the
owner thereof died in 1997; and that petitioner again
applied to register its mark after securing the
previously-cited registration, only to have the
registration here sought to be canceled cited as a bar
under Section 2(d) of the Act. The Petition to Cancel
alleges priority and likelihood of confusion as grounds
for cancellation of respondent’s registration.
Respondent denied the allegations of petitioner and
asserted laches as an affirmative defense. Additionally,
respondent counterclaimed to cancel Registration No.
1,395,742, the registration referred to above, which
petitioner had acquired from the estate of Dante Bedini
in 1997. As grounds for cancellation, respondent
asserted that the mark “COFFEE EXPRESS” has become
generic. Petitioner answered the counterclaim by denying
that the mark is generic for the goods specified in the
registration, “non-electric coffee pots.”
A trial was conducted in accordance with the
Trademark Rules of Practice. Testimony and evidence were
introduced by both parties. The record before us in this
proceeding includes the testimony, with exhibits, of
Cancellation No. 28,360
4
Thomas Isiah, petitioner’s president, and of Eduardo
Gautier, Jr., respondent’s president, as well as
responses to discovery requests and a number of other
exhibits made of record by notices of reliance. Both
parties filed briefs, but no oral hearing before the
Board was requested.
Based on careful consideration of this record, the
arguments presented in the briefs and the relevant legal
precedents, we hold that the petition for cancellation of
Reg. No. 2,081,278 must be granted, and that the
counterclaim for cancellation of Reg. No. 1,395,742 must
be denied.
In view of the refusal to register petitioner’s mark
based on likelihood of confusion with respondent’s
registered mark, it is clear that petitioner is being
damaged by the existence of the registration it seeks to
cancel by means of this proceeding. Petitioner’s
standing to bring this action is therefore established.
Turning, then, to petitioner’s claims of priority
and likelihood of confusion, we note first that
respondent argues that petitioner cannot use 1975 as the
date of its first use in order to establish priority.
Respondent notes that since 1975, petitioner and its
predecessor have combined several different combinations
Cancellation No. 28,360
5
of words and designs with the words “COFFEE EXPRESS” in
connection with various aspects of its coffee business.
Respondent’s position seems to be that each time
additional words or designs were added to or deleted from
“COFFEE EXPRESS,” petitioner brought a new mark into the
world and could no longer claim priority based on the
previous version or versions of its trademark.
As petitioner correctly points out, however, this is
not the case. The record clearly shows continuous use of
“COFFEE EXPRESS” as the trade name of petitioner and its
predecessor and as a trademark in connection with
petitioner’s goods since the mid-1970s. Mr. Isiah
testified that petitioner first used “COFFEE EXPRESS” as
a trademark on coffee in 1979, well before the 1995 first
use date claimed by respondent for its registered mark;
and that petitioner continues to use the mark in
connection with its products. The words “COFFEE EXPRESS”
have certainly been used by petitioner with a number of
different combinations of words and designs, but
throughout the years, the words “COFFEE EXPRESS” have
always functioned as petitioner’s trademark.
In view of petitioner’s priority, the question
becomes whether the use of respondent’s registered mark,
which combines the words “COFFEE EXPRESS” with a design
Cancellation No. 28,360
6
of a coffee cup for liquid coffee concentrate and
powdered coffee, is likely to cause confusion with
petitioner’s trademarks, all of which are for or are
dominated by the words “COFFEE EXPRESS,” for coffee and
coffee-related products. Confusion is plainly likely
because the commercial impressions of petitioner’s
trademarks are quite similar to that of the mark
petitioner seeks to cancel, and the goods in connection
with which they are all used are commercially related.
The predecessor to our primary reviewing court set
out the factors to be considered in determining whether
confusion is likely in In re E. I. DuPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, (CCPA 1973). Although
we do not have probative evidence relating to all of the
thirteen factors listed therein, the evidence we do have
establishes that confusion is likely.
As noted above, although the marks do possess some
differences, they create similar commercial impressions
because the words “COFFEE EXPRESS” are the dominant
portion of respondent’s mark and the trademarks of
petitioner. “COFFEE EXPRESS” is suggestive in connection
with the coffee products sold under these marks, but the
suggestion is the same, namely that the goods involve
providing coffee quickly.
Cancellation No. 28,360
7
The second factor, the relationship between the
goods with which the marks are used, also cuts in
petitioner’s favor. As noted above, under its mark
petitioner sells coffee beans, ground roasted coffee and
related products such as coffee pots and coffee mugs.
The goods specified in respondent’s registration are
powdered coffee and liquid coffee concentrate. We are
not able to precisely differentiate powdered coffee from
ground coffee, but, at a minimum, these goods appear to
be very similar, and in view of the unrestricted manner
in which they are identified in respondent’s
registration, we must assume that these goods move in all
the usual trade channels for such products to all the
usual purchasers of them, which would clearly overlap.
In fact, the testimony indicates that respondent
conducts business in the same markets as petitioner and
has attended the same type of trade shows. Contrary to
respondent’s contentions, there is no evidence that the
purchasers of ground coffee or powdered coffee are
sophisticated or knowledgeable such that they are likely
to avoid being confused by the use of such similar
trademarks in connection with goods which are so closely
related.
Cancellation No. 28,360
8
Several of the factors identified in the DuPont case
do not cut in favor of either party in the instant case.
We have no proof that any of these marks has acquired
fame, and the testimony concerning actual confusion that
was alledged to have occurred is vague, confusing and
insufficient to support a conclusion that customers of
petitioner were actually confused.
Petitioner has used and continues to use marks
consisting of or dominated by the words “COFFEE EXPRESS”
on a wide variety of collateral goods, from jackets and
mugs to napkins. As noted above, it owns a valid and
subsisting registration of the mark for coffee pots. As
we explain below, the counterclaim to cancel that
registration because the mark is generic is without
merit.
When all of the evidence of record is considered, we
conclude that confusion is likely.
In addition to finding that petitioner has priority
and that confusion is likely, we also hold that
respondent has not provided sufficient proof in support
of its affirmative defense of laches. This action to
cancel was brought a year and seven months after
respondent’s mark was published for opposition.
Respondent does not explain how bringing this action at
Cancellation No. 28,360
9
that time could be considered untimely, especially in
light of the fact that petitioner advised respondent of
its rights and threatened to bring a cancellation
proceeding less than a year after respondent’s mark had
been published.
We thus turn to consideration of respondent’s
counterclaim. Respondent has not established any factual
basis for its counterclaim to cancel petitioner’s
registration of “COFFEE EXPRESS” on the ground of
genericness. Although some of the evidence relied upon
by respondent does indicate that there are a couple of
other entities in this country using “COFFEE EXPRESS” in
conjunction with coffee shop services, it is not at all
clear whether this use is use as a service mark, much
less that it is use as a generic term for any goods or
services. Moreover, even if respondent had established
widespread use of “COFFEE EXPRESS” in connection with
coffee shop services, such uses do not prove that the
term has become generic for non-electric coffee pots,
which are the goods identified in the registration
respondent seeks to cancel by means of its counterclaim.
Respondent argues in its brief that petitioner has
abandoned use of this registered mark, but that ground
was not pleaded by respondent.
Cancellation No. 28,360
10
Decision: The counterclaim to cancel Reg. No.
1,395,742 is denied, and the petition to cancel Reg. No.
2,081,278 is granted.