David John Critchley

Trademark Trial and Appeal BoardSep 28, 2012

No. 78877552 (T.T.A.B. Sep. 28, 2012)

OPN Mailed: September 28, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Critchley ________ Serial No. 78877552 _______ Peter B. Kunin of Downs Rachlin Martin PLLC for David John Critchley. Kyle Christopher Peete, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Bucher, Zervas and Wolfson, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: David John Critchley (“applicant”) filed an application (Serial No. 78877552) to register KICK ASS (in standard character form) on the Principal Register for “energy drinks, fruit and vegetable juices, fruit and vegetable juice-based drinks, bottled drinking water, mineral and tonic water” in International Class 32. Applicant seeks registration under the provisions of Trademark Act §§ 1(b) and 44(e), 15 U.S.C. §§ 1051 (b) and THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 78877552 2 1126(e). The application also includes clothing in International Class 25, but such goods are not the subject of any final refusal to register; only the International Class 32 goods are involved in this appeal. The examining attorney issued a final refusal to register the International Class 32 goods under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the standard character mark of Registration No. 2896141, which registered as KICK ASS COFFEE and which has been recently amended to KICK ASS, for “coffee,” in International Class 30, as to be likely to cause confusion or mistake or to deceive. Applicant appealed the final refusal. Both applicant and the examining attorney filed briefs. We affirm the refusal to register. We first address two preliminary matters. The first preliminary matter concerns the exhibit first submitted by applicant with its reply brief, a copy of registrant’s request to amend the cited registration. The additional evidence submitted with applicant’s reply brief has not been considered. The record closed with the filing of the Notice of Appeal. Trademark Rule 2.142 (d). Serial No. 78877552 3 We now turn to the second preliminary matter, namely, the identity of the mark which is the subject of the cited registration. While applicant maintains that the mark we must consider is KICK ASS COFFEE, which was the mark of the registration when the examining attorney issued the final refusal, the examining attorney maintains that the mark is KICK ASS, which is the mark currently identified in the registration. Subsequent to the filing of the appeal on December 11, 2008, registrant filed on April 12, 2011, under Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c), a request to amend its registered mark from KICK ASS COFFEE to KICK ASS. The request was approved and the mark was amended on May 3, 2011 to KICK ASS. Applicant’s first brief was subsequently filed on September 14, 2011.1 Thus, we must determine what mark we consider, which has been amended after the final Office action issued but prior to the filing of applicant’s first brief. On one hand, it is a matter of fairness to the applicant, who has prosecuted the application and has offered evidence and developed a strategy believing the mark to be a particular term. On the other hand, a mark may not be amended if 1 Applicant states in its main brief at p. 3, without explanation, that “[i]t is unclear from the USPTO online records whether that request was actually granted.” The online record for Registration No. 2896141 clearly indicates that the cited registration was amended on May 3, 2011. Serial No. 78877552 4 there is a material alteration to the mark, and an amendment to a registered mark will only be accepted when “the new form … [has] the impression of being essentially the same mark.”2 In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983). Additionally, an applicant may request a remand to the examining attorney after the amendment to the registered mark has been approved by the Office to make further arguments against registration or introduce additional evidence. In this case, neither the examining attorney nor applicant requested a remand for further prosecution in light of the amendment to registrant’s mark. After careful consideration of this issue, we determine that our decision must be based on the present form of the mark; that is, KICK ASS, not KICK ASS COFFEE. However, to accord applicant the benefit of a complete analysis, we will first consider the registrant’s mark as KICK ASS and then as KICK ASS COFFEE. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set 2 Trademark Act Section 7(e), 15 U.S.C. Section 7(e), provides, in part, “the Commissioner for good cause may permit any Serial No. 78877552 5 forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We first consider the similarity or dissimilarity of the marks. In determining the similarity or dissimilarity of marks, we consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). KICK ASS As KICK ASS, the marks are identical. Further, KICK ASS in regard to the involved goods has the same meaning and commercial impression; the meaning and commercial impression of the mark does not change when used on applicant’s or registrant’s goods. See the definition registration to be amended … Provided, That the amendment … does not alter materially the character of the mark.” Serial No. 78877552 6 submitted by the examining attorney with his brief taken from Dictionary of American Slang and Colloquial Expressions (4th ed. 2007), located at dictionary.com, namely, “really fine; excellent; cool (Usually objectionable.): That was a real kick-ass party you had the other night!”3 KICK ASS COFFEE While we consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression, it is nonetheless not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 24 USPQ2d 749 (Fed. Cir. 1983). Descriptive or generic matter, and matter that has been disclaimed because it is descriptive or generic, is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ2d at 752. See also, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); In re Code Consultants Inc., 60 USPQ2d 1699 (TTAB 2001) (a descriptive term is less significant in creating the mark’s commercial impression). 3 See In re Future Ads LLC, 103 USPQ2d 1571 (TTAB 2012) (the Board may take judicial notice of dictionary definitions taken Serial No. 78877552 7 COFFEE is the generic term for registrant’s goods. KICK ASS, as a unitary term, is therefore the dominant component of the mark, and KICK ASS COFFEE is the legal equivalent of KICK ASS. Applicant’s mark is identical to the dominant component of the mark. Thus, even if registrant’s mark is considered as KICK ASS COFFEE, the du Pont factor regarding the similarity of the marks is resolved against applicant. Applicant states that confusion is not likely because KICK ASS is a weak term for coffee. In support, applicant relies on the following five registrations that contain the wording KICK ASS: Registration No. 1696285 for KICK ASS FILET for “filet of beef served over two pepper sauces with bernaise sauce”; Registration No. 2235525 for BEST EVER KICK-ASS for “prepared alcoholic cocktail”; Registration No. 2431193 for KICK ASS KARAOKE and design for “entertainment services in the nature of live performances by a musical group”; Registration No. 3047281 for KICK ASS PICTURES and design for “prerecorded videotapes featuring adult oriented entertainment; multimedia software recorded on CD-Rom featuring adult oriented entertainment” and “videotape production; entertainment in the nature of production of prerecorded adult oriented videotapes and multimedia software production services; entertainment in the nature of prerecorded adult- from the Internet that appear in printed form). We take judicial notice of this definition of “kick ass.” Serial No. 78877552 8 oriented programming distributed by audio and video media and a global computer network; distribution of adult-oriented television programming to cable television systems”; and Registration No. 2556137 for KICKASS (stylized) for “parts and accessories for land and marine vehicles, namely, air cleaner assemblies-- replacement parts for air cleaner assemblies; air cleaner/flame arrestor assemblies; pre-cleaner air filter assemblies; air cleaner vent breather assemblies; air filter replacement elements; air cleaner to carburetor adaptors.” These registrations are of limited probative value because they recite goods (and services) which are different from applicant’s and registrant’s goods. In addition, as noted by the examining attorney, third-party registrations are generally entitled to little weight in determining the strength of a mark, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198 (TTAB 2009). We next consider the du Pont factor regarding the similarity or dissimilarity and nature of the goods. The goods need not be identical to find likelihood of confusion under Section 2(d) of the Trademark Act. Rather, they need only be related in such a way that the circumstances Serial No. 78877552 9 surrounding their marketing would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978). Applicant argues that “coffee” in registrant’s identification of goods is limited to “ingredients for making coffee beverages (i.e., ground coffee, coffee beans)” as opposed to coffee beverages. We must consider the goods as they are identified in the registration and application, and it is improper to import any extraneous limitations. Paula Payne Prods. v. Johnson Publ. Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). Thus, where an identification of goods is broadly constructed, we must allow for all possible items that may fall within the identification. In addition, TMEP § 1402.03 (8th ed. 2011) states: The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services. A basic and widely available dictionary should be consulted to determine the definition or understanding of a commonly used word. Serial No. 78877552 10 “Coffee” is defined on the online version of Merriam- Webster Dictionary accessed at merriam-webster.com as4 As demonstrated in the definition, “coffee” includes both a beverage and the seeds (or beans). Therefore, we must presume that “coffee” as broadly identified in the registration encompasses all types of coffee, including whole bean, ground and roasted coffee, as well as coffee beverages. Applicant’s argument that the goods are limited to “not … any coffee beverages, but to coffee grounds or coffee beans” is rejected. As evidence that the goods are related, the examining attorney introduced a number of third-party registrations, only two of which are probative and serve to suggest that 4 We take judicial notice of this definition. Serial No. 78877552 11 the recited goods may emanate from a common source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We consider the following: Registration No. 2570227 including “coffee” and “spring water, mineral water, seltzer water, soda water, fruit juices”; and Registration No. 3070033 including “coffee” and “apple cider, fruit punch, fruit juice.”5 In addition, the examining attorney made of record (with his July 16, 2011 Office action) web pages from starbucks.com and dunkindonuts.com, which demonstrate use of the same mark in connection with both coffee and fruit- based drinks. See (i) “coffee Frapuccino” and “soy strawberries and crème Frapuccino”; (ii) “Doubleshot energy cinnamon dolce drink” and “Doubleshot light espresso drink”; and (c) “strawberry Coolatta” and “coffee Coolatta.” From this evidence, we find that purchasers would consider the same mark or highly-similar marks on such goods to emanate from the same source. With regard to trade channels, applicant maintains that registrant’s goods would be offered for sale in the 5 We do not consider the four registrations submitted by the examining attorney which have been cancelled. See In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB 2011) (“cancelled registrations have no probative value at all.”). We have also not considered Registration No. 3151246 which recites “non-alcoholic drink mixes, Serial No. 78877552 12 grocery store aisle where coffee ingredients are located and applicant’s goods would be offered for sale where beverages are displayed; and that the sale of goods in the same store is not a sufficient basis for concluding that the goods are so related that a likelihood of confusion arises, citing Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978). Brief at 7. We disagree. The Internet evidence from starbucks.com and dunkindonuts.com demonstrates that goods of the kind listed in the application and the cited registration are not only offered in grocery stores but at least are advertised side by side on websites. Applicant also argues in its brief that “[i]t would be absolutely incongruous, and likely deceptive, if the owner of KICK ASS COFFEE began using its mark KICK ASS COFFEE to identify” ready-to-drink, non-coffee beverages. That is not an issue before us. The question in determining whether a likelihood of confusion exists is whether the marks will confuse people into believing that the goods they identify come from the same source. In re West Point- Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972). namely, smoothie and frappe mixes,” goods which are not involved in this appeal. Serial No. 78877552 13 When we consider the record and the relevant likelihood of confusion factors, and all of applicant’s arguments relating thereto, we conclude that, when potential purchasers of applicant’s and registrant’s goods encounter the applied-for and registered marks for their respective goods, they are likely to believe that the sources of these goods are in some way related or associated with one another. As a result, there is a likelihood of confusion. DECISION: The refusal to register under Section 2(d) of the Trademark Act for the goods in International Class 32 is affirmed. The application will proceed to publication only for the International Class 25 goods.