Jamba Juice Co.

Trademark Trial and Appeal Board

Sep 16, 1999

No. 75148351 (T.T.A.B. Sep. 16, 1999)

Paper No. 12
RLS/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/16/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jamba Juice Company
________
Serial No. 75/148,351
_______
Susan E. Hollander of Arter & Hadden for Jamba Juice
Company.
Geoffrey Fosdick, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney)
_______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Jamba Juice Company (applicant), a California
corporation, successor-in-interest to Juice Club, Inc., has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark ORANGE OASIS (“ORANGE”
disclaimed) for fruit and vegetable juices.1 The Examining

1 Application Serial No. 75/148,351, filed August 12, 1996, based
upon allegations of use since September 28, 1995. The assignment
is recorded at Reel 1850 Frame 0105.
Ser. No. 75/148,351
2
Attorney has refused registration under Section 2(d) of the
Act, 15 USC §1052(d), on the basis of Registration No.
2,043,915, issued March 11, 1997, covering the mark OASIS
for non-carbonated fruit juice drinks and Registration No.
273,660, issued August 5, 1930 (third renewal), covering
the mark shown below for nonalcoholic, maltless beverages
sold as soft drinks.2
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested.
We affirm.
It is the Examining Attorney’s position that, for a
drink which the specimens show is made partly from orange
juice, the term “OASIS” in applicant’s mark is the dominant
origin-indicating feature. The Examining Attorney points
out that the term ORANGE is descriptive and has been
disclaimed by applicant since it is a taste and ingredient

2 The registrant in the ´915 registration claimed ownership of
the ´660 registration. According to information contained in the
TRAM system (screen 7947), where goods in an identification are
bracketed ([……]), that means that those goods have been deleted.
No consideration will therefore be given to the following listing
of goods set forth in the ´660 registration: “[and concentrates,
compounds, and syrups for making the same]”.
Ser. No. 75/148,351
3
indicator with little trademark significance. Further, the
Examining Attorney argues that, because there is no
limitation in the identifications in the cited
registrations and in applicant’s application, the Office
must presume that the goods listed include all of the goods
of the type described and that they may move in all normal
channels of trade to all potential purchasers of those
goods. Although, as discussed below, applicant asserts
that its goods are, in reality, made-to-order fresh juice
drinks, the Examining Attorney argues that applicant’s
description of goods in its application (“fruit and
vegetable juices”) is broad enough to include pre-packaged
or bottled drinks.
Applicant, on the other hand, argues that it operates
specialty fruit juice and smoothie stores, and that its
goods are fresh vegetable and juice drinks sold in those
stores to health-conscious consumers. These drinks are
sold in unsealed containers. In view thereof and because
applicant does not make or sell bottled soft drinks, it is
applicant’s position that the respective goods travel in
different channels of trade.
With respect to the marks, applicant contends that the
marks differ in sight, sound and meaning. In this regard,
applicant argues that the term “ORANGE” is the first word
Ser. No. 75/148,351
4
and is the dominant part of its mark. As to meaning, it is
applicant’s position that applicant’s mark brings to mind
an orange in the middle of a desert or suggests an orange
drink to relieve one’s thirst while the registered mark
merely suggests a verdant spot in the desert.
Although applicant has argued that its goods are non-
competitive with those of registrant and are sold in
different channels of trade, as the Examining Attorney has
pointed out, we are not at liberty to view applicant’s
goods in the manner it wants us to. The issue of
likelihood of confusion must be resolved not only by
comparison of the marks involved “but also on consideration
of the goods named in the application and in [opposer’s]
registration and, in the absence of specific limitations in
the application and registration, on consideration of the
normal and usual channels of trade and methods of
distribution.” CBS, Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198 (Fed. Cir. 1983). See also Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-
1816 (Fed. Cir. 1987) and In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). As the Court explained in the CBS case, the
definition of goods in an application is important because
any registration that issues will carry that description
and because a current business practice may change at any
Ser. No. 75/148,351
5
time. Considered in this light, we believe that
applicant’s fruit and vegetable juices are very similar to
registrant’s fruit juice drinks and other beverages sold as
soft drinks, and could be sold in the same channels of
trade to the same class of purchasers. Also, applicant’s
mark incorporates the entirety of the registered mark and
merely adds the descriptive flavor or ingredient “ORANGE.”
Potential purchasers, aware of registrant’s OASIS fruit
juice drinks and beverages, who then encounter applicant’s
ORANGE OASIS fruit (and vegetable) juices, realizing that
applicant’s goods are made, at least in part, from oranges,
are likely to believe that applicant’s juices are a new or
different drink from registrant.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board