M&D Wholesale Distributors, Inc.

Trademark Trial and Appeal BoardJul 25, 2016

No. 86182803 (T.T.A.B. Jul. 25, 2016)

This Opinion is not a Precedent of the TTAB Oral Hearing: June 7, 2016 Mailed: July 25, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re M&D Wholesale Distributors, Inc. _____ Serial No. 86182803 _____ Timothy D. Pecsenye of Blank Rome LLP, for M&D Wholesale Distributors, Inc. Geoffrey Fosdick, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Masiello, Goodman and Lynch, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: M&D Wholesale Distributors, Inc., (“Applicant”) seeks registration on the Principal Register of the mark BAHIA TRINIDAD (in standard characters) for “Cigars” in International Class 34.1 1 Application Serial No. 86182803 was filed on February 3, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 19, 2009. Applicant has claimed ownership of prior Registration No. 2233458, for the mark which contains the terms BAHIA GOLD TONY BORHANI Serial No. 86182803 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s mark, when used in connection with Applicant’s goods, so resembles the three previously registered marks set forth below, all owned by the same entity, as to be likely to cause confusion: TRINIDAD2 for “tobacco products, namely, cigars,” in International Class 34; ,3 for “tobacco products, namely, cigars,” in International Class 34; and TRINIDAD PARADOX4 for “cigars,” in International Class 34. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. HAND MADE COSTA RICA and Registration No. 3668417 for the mark which contains the terms BAHIA BLU TONY BORHANI HAND MADE IN NICARAGUA. 2 Registration No. 2824209, in typed form; issued March 23, 2004; renewed. Trinidad is translated as the Spanish word for trinity. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark Manual of Examining Procedure § 807.03(i)). 3 Registration No. 2915420, in typed form, issued January 4, 2005; renewed. 4 Registration No. 4455847, in standard characters, issued December 24, 2013. Serial No. 86182803 - 3 - I. Applicable Law Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. 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, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now before us, are discussed below. II. Discussion In this case, we confine our analysis to the issue of likelihood of confusion between Applicant’s mark and the mark in Registration No. 2824209, which is the mark TRINIDAD (typed drawing), for goods identified in the registration as “tobacco products, namely, cigars.” A finding of likelihood of confusion between Applicant’s mark and this previously-registered mark suffices by itself to bar registration of Applicant’s mark under Section 2(d); we need not find likelihood of confusion as to all of the cited registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009). A. Relatedness of the Goods and Channels of Trade We first consider the du Pont factors of the relatedness of the goods and channels of trade. We base our evaluation on the goods as they are identified in the application Serial No. 86182803 - 4 - and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). In this case, the “cigars” identified in the application are legally identical to the “tobacco products, namely, cigars” identified in Registration No. 2824209. Furthermore, because the goods are legally identical, the channels of trade and classes of purchasers for such goods are presumed to be the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). We find that these du Pont factors favor a finding of likelihood of confusion.5 B. Comparison of the Marks We next compare the marks “in their entireties as to appearance, sound, connotation and commercial impression” to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 5 Applicant has not addressed these du Pont factors in its brief. Serial No. 86182803 - 5 - 177 USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). 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, 108 (TTAB 1975). Finally, we note that it is well-settled that, where the goods are identical, typically less similarity is needed to create a likelihood of confusion. See, e.g., In re Viterra, 101 USPQ2d at 1908; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). Applicant submits that there are “appreciable differences in appearance, sound, connotation and overall commercial impression” between its mark BAHIA TRINIDAD and the cited mark TRINIDAD.6 Applicant argues that BAHIA is the dominant and distinguishing portion of its mark and that this additional term results in a mark that is different in sound, emphasis and cadence from the registered mark as well as different in appearance. Applicant submits that the marks also are different in connotation in that TRINIDAD in the registered mark is a geographic reference to a Cuban municipality, while its mark BAHIA TRINIDAD connotes a 6 7 TTABVUE 18. Serial No. 86182803 - 6 - reference to its BAHIA-formative marks used in connection with a line of cigars. Applicant contends that the terms BAHIA and TRINIDAD in its mark will be considered arbitrary by relevant consumers and that its mark and the registered mark convey “appreciably different commercial impressions.”7 In comparing the marks in their entireties, the word TRINIDAD is identical in appearance, sound, and meaning in both marks. We reject Applicant’s unsupported argument that the identical word TRINIDAD somehow creates a different impression in its mark than in the cited mark. We note that Applicant’s mark incorporates Registrant’s entire mark, heightening the similarity between the two. “When one incorporates the entire arbitrary mark of another into a composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion.” (internal citations omitted). Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo likely to cause confusion with CONCEPT for cold permanent wave lotion and neutralizer). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (applicant’s BENGAL LANCER and Bengal Lancer soldier design is similar to opposer’s mark BENGAL); In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (applicant’s mark E-CELL is similar to the cited mark E). 7 7 TTABVUE 17. Serial No. 86182803 - 7 - We find that Applicant’s mark and the cited mark are more similar than dissimilar. We are not persuaded that the presence of the term BAHIA in Applicant’s mark is sufficient to differentiate Applicant’s mark from the registered mark such that it conveys a significantly different meaning or different overall commercial impression. There is nothing in the record to suggest that Applicant’s BAHIA TRINIDAD mark would convey a different connotation or commercial impression than that conveyed by Registrant’s TRINIDAD mark when used in connection with Applicant’s goods.8 We also find that the record does not establish that TRINIDAD is so highly suggestive as used in connection with cigars that the addition of the term BAHIA in Applicant’s mark sufficiently distinguishes the marks. To the extent that Applicant asserts that the term BAHIA is a product mark and connotes a reference to its line of cigars, the addition of this term to TRINIDAD does not avoid confusion. In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 (TTAB 2009) (no rule that addition of product mark to a registered mark avoids confusion). Because the goods at issue are legally identical, to the extent that consumers would note or recognize the differences between BAHIA TRINIDAD and TRINIDAD, consumers may view BAHIA TRINIDAD as another variation of Registrant’s TRINIDAD marks, rather than as a mark indicating a separate source of the goods. See, e.g., Viterra, 101 USPQ2d at 1908; Century 21, 23 USPQ2d at 1700. We find this du Pont factor favors a finding of likelihood of confusion. 8 During prosecution, the Examining Attorney did not address the significance, geographic or otherwise, of the term TRINIDAD in Applicant’s mark. Serial No. 86182803 - 8 - C. Extent of Potential Confusion Applicant argues that the extent of potential confusion is de minimis due to the distinctions in the marks and the lack of “persuasive evidence” to support confusion as to source. Applicant’s contention is unsupported. We find substantial evidence to support likely confusion in this case. Further, because these goods are frequently purchased by the public at large, the number of people who may be confused is substantial, and therefore the potential for confusion is not de minimis. This du Pont factor also favors a finding of likelihood of confusion. III. Conclusion We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. We find that Applicant’s mark BAHIA TRINIDAD so resembles the cited registered mark TRINIDAD as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods. Decision: The refusal to register is affirmed based on a likelihood of confusion with Registration No. 2824209.