Jamba Juice Co.

Trademark Trial and Appeal Board

Aug 18, 1999

No. 75148350 (T.T.A.B. Aug. 18, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 18 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jamba Juice Company
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Serial No. 75/148,350
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Jayne A. Peeters of Arter & Hadden LLP for Juice Club, Inc.
Geoffrey A. Fosdick, Trademark Examining Attorney, Law
Office 101 (Chris Wells, Managing Attorney).
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Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 12, 1995, applicant’s predecessor, Juice
Club, Inc., applied to register the mark "ORANGE ZINGER" on
the Principal Register for "fruit and vegetable juices," in
International Class 32. The application was based on
applicant’s claim of first use and first use in interstate
commerce on September 28, 1995.
The Examining Attorney refused registration under
Section 2(d) of the Act, holding that applicant’s mark, as
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applied to the goods set forth in the application, so
resembles five registered trademarks, all of which are
owned by Celestial Seasonings Inc., that confusion is
likely. The registered marks include the identical mark,
"ORANGE ZINGER",1 as well as the marks "RED ZINGER";2 "LEMON
ZINGER";3 "ZINGER";4 and "WILD BERRY ZINGER."5 The goods
are listed in each registration as "herb tea."
Registrations for the marks "ORANGE MANGO ZINGER";6 and
"RASPBERRY ZINGER,"7 both for "tea," and both also owned by
Celestial Seasonings Inc., were also mentioned in the first
Office Action, but were not cited as bars to registration.
In support of the refusal to register, the Examining
Attorney provided copies of five third-party registrations
wherein the marks are registered for both fruit juices and

1 Registration No. 1,481,773 issued on the Principal Register on
March 22, 1988. The descriptive word "orange" was disclaimed;
combined affidavit under Sections 8 and 15 received and accepted.
2 Reg. No. 1,390,146 issued on the Principal Register on April
15, 1986. The descriptive word "red" was disclaimed; combined
affidavit under Sections 8 and 15 received and accepted.
3 Registration No. 1,390,142 issued on the Principal Register on
April 15, 1986. The descriptive word "lemon" was disclaimed;
combined affidavit Under Sections 8 and 15 received and accepted.
4 Registration No. 1,515,651 issued on the Principal Register on
Dec. 6, 1988; combined affidavit under Sections 8 and 15 was
received and accepted.
5 Registration No. 1,834,824 issued on the Principal Register on
May 3, 1994. The descriptive term "wild berry" was disclaimed.
6 Registration No. 1,948,634 issued on the Principal Register on
Jan. 16, 1996. The descriptive term "orange mango" was
disclaimed.
7 Registration No. 1,942,603 issued on the Principal Register on
December 19, 1995. The descriptive word "raspberry" was
disclaimed.
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tea. Three of these registrations are based on use in
commerce.
The Examining Attorney also required applicant to
disclaim the word "ORANGE" apart from the mark as shown.
Applicant responded to the first Office Action by
disclaiming the word "ORANGE," and arguing that no
confusion is likely with respect to the cited registered
trademarks. Applicant argued that the goods in the cited
registrations are unrelated to, and uncompetitive with, the
goods set forth in the application. Attached to
applicant’s response were copies of newswire articles
referring to the fact that the registrant manufactures and
markets pre-packaged tea.
The Examining Attorney considered applicant’s
arguments, but was not persuaded, and the refusal to
register under Section 2(d) of the Act was continued and
made final.
Applicant timely filed a Notice of Appeal, and both
applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing, so the Board has
resolved this appeal based on the written record before us.
Careful consideration of these materials leads us to
conclude that confusion is likely in this case.
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The Examining Attorney does not disagree with
applicant concerning the test to be applied in determining
whether confusion is likely. The predecessor to our
principal reviewing court set forth that test in In re E.
I. Du Pont deNemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). As in many cases involving this issue, in the
instant case key elements of the test are the similarity of
the marks and whether the products with which applicant
uses its mark are commercially related to the goods set
forth in the cited registrations.
In this case the marks are, as noted above, in part
identical. Applicant’s mark is "ORANGE ZINGER," with the
descriptive word "ZINGER" disclaimed, and one of the cited
registered marks are the same. Additionally, each of the
other four cited registered marks is either the word
"ZINGER" by itself or the word "ZINGER" combined with
different descriptive, disclaimed words. The word "ZINGER"
is clearly the dominant component of each of these marks.
Applicant’s mark is similar to each of the registered marks
because of this fact. These marks all create similar
commercial impressions.
We turn, then, to the relationship of the goods set
forth in the application with the goods specified in the
cited registrations. The relationship between the goods
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does not need to be as close when both parties are using
the same mark. Amcor, Inc. V. Amcor Industries, Inc., 210
USPQ 70 (TTAB 1981). The issue here is not, as applicant
argues, whether the differences between tea and fruit
juices are clearly recognizable by consumers, or whether
consumers would confuse the products. Monarch Wine Co. v.
Hood River Distillers, Inc., 196 USPQ 855 (TTAB 1977). The
goods do not need to be the same, or even competitive, in
order for confusion to be likely. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The issue is whether these goods are related in such a way
that the use of the same or very similar marks on these
products would lead prospective purchasers to conclude that
they come from the same source.
We agree with the Examining Attorney that this record
establishes consumers have a basis upon which to expect
fruit juices and herb tea to emanate from a single source.
The third-party use-based registrations submitted by the
Examining Attorney show this. See In re Albert Trostel &
Sons, Inc., 29 USPQ2d 1783 (TTAB 1993), wherein this Board
stated, at p. 176, that "… third-party registrations which
individually cover a number of different items and which
are based on use in commerce may have some probative value
to the extent that they serve to suggest that the listed
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goods and/or services are of a type which may emanate from
a single source." The Board cited In re Mucky Duck Mustard
Co., 6 USPQ2d 1467 (TTAB 1988), and the cases cited therein
as support for this proposition.
Applicant’s argument that the goods are not related is
not persuasive. Applicant contends that its products are
"freshly made fruit and vegetable juices" which are "sold
at retail in specialty juices and smoothie stores" operated
by applicant. Applicant goes on to explain that its drinks
are made fresh and sold in sealed cups or containers,
whereas the registrant’s tea is sold in packaged bags
containing dried tea leaves which are placed in water to
make a tea drink.
We have no basis to contest applicant’s contentions
regarding these facts, but we are obligated to resolve the
issue of likelihood of confusion based on the goods as they
are identified in the application and respective
registrations, without limitations or restrictions not
reflected in the language therein. In re Elbaum, 211 USPQ
639 (TTAB 1981). Because of the way the goods are
identified simply as "herb tea" and "fruit and vegetable
juices" in the cited registrations and application,
respectively, we must assume that applicant’s goods are
sold through all appropriate channels of trade for fruit
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and vegetable juices, including the supermarkets in which
herbal tea can be sold.
Any doubt as to whether confusion is likely would
necessarily have to be resolved in favor of the registrant,
and against the applicant, who had a legal duty to select a
mark which is not similar to the marks already in use on
related goods. Burroughs Wellcome Co. v. Warner-Lambert
Co., 201 USPQ 191 (TTAB 1979).
Decision: the refusal to register under Section 2(d)
of the Act is affirmed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial & Appeal Board
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