NewAge Industries, Inc.v.Jet Spray Corp.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 91100940 (T.T.A.B. Aug. 6, 2002)

8/6/02

Paper No. 34

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

NewAge Industries, Inc.
v.
Jet Spray Corporation
_____

Opposition No. 100,940
to application Serial No. 74/580,684
filed on September 30, 1994
_____

Roberta Jacobs-Meadway and Emily J. Barnhart of Ballard
Spahr Andrews & Ingersoll for NewAge Industries, Inc.

Edward F. Perlman of Wolf, Greenfield & Sacks for Jet
Spray Corporation.
______

Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Jet Spray Corporation filed an application to
register the mark NEWAGE JET SPRAY for “beverage
dispensing machines.”1

1 Application Serial No. 74/580,684, filed September 30, 1994,
alleging a bona fide intention to use the mark in commerce.
Applicant claims ownership of Registration Nos. 778,989,
1,460,763, and others.
THIS DECISION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 100,940
2
NewAge Industries, Inc. opposed registration under
Section 2(d) of the Trademark Act. Opposer asserted that
it manufactures and sells, under the mark NEWAGE, a full
line of tubing, hoses, fittings and accessories for the
food and beverage industry, that beverage dispensing
machines such as applicant’s normally use tubing, hoses,
and fittings of the type sold under opposer’s mark
NEWAGE, and that applicant’s mark, if applied to
applicant’s goods, would so resemble opposer’s previously
used and registered mark NEWAGE for “metal hardness
testers” and “plastic tubing for general industrial and
institutional use”2 as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of
the involved application; trial testimony, and related
exhibits, taken by opposer; a certified copy of opposer’s
pleaded registration (showing that such is subsisting and
owned by opposer), applicant’s responses to certain of
opposer’s interrogatories and requests for admissions,
and excerpts from a printed publication, all introduced
by opposer’s notices of reliance; and a stipulation to
admit certain of opposer’s catalogs and product

2 Registration No. 1,545,260, issued June 27, 1989; combined
Opposition No. 100,940
3
literature. Applicant did not take testimony or
introduce any other evidence. Only opposer filed a
brief.
Before turning to the merits of the opposition, we
note that on May 28, 1999, during applicant’s testimony
period, a
stipulation was filed to abandon the application without
prejudice and to dismiss the opposition without
prejudice. The stipulation was between opposer and IMI
Cornelius Inc. (“IMI”), a non-party to this proceeding.
IMI was identified as “the successor to [applicant] as
evidenced by the transfer recorded November 16, 1998 at
Reel 1817/Frame 0657.” The Board, in an order dated
September 21, 1999, indicated that Office records “do not
show clear chain of title and there is no record on file
of ownership [of the involved application] being
transferred from Jet Spray Corp. To IMI Cornelius Inc.”
The Board noted that, based on the recorded document, “it
appears IMI holds only a security interest in the mark.”
Applicant was allowed time to establish a chain of title
to the involved application whereby the stipulation could
be approved by the Board. Although applicant sought an
extension of time to address this issue, nothing more was

Sections 8 and 15 affidavit filed.
Opposition No. 100,940
4
heard from applicant. The Board, on October 5, 2000,
noted that the Office records still failed to reveal any
change in ownership of the involved application, and that
the record of this proceeding failed to include proof of
an assignment of the application to IMI. Accordingly,
the Board did not approve the stipulation to abandon the
application and dismiss the opposition, and allowed
opposer time in which to advise the Board of its
intentions in this proceeding. Opposer then withdrew its
withdrawal of the opposition, and the Board rescheduled
trial dates, beginning with applicant’s testimony period.
In the Board’s order, it again was noted that Office
records did not reflect any change in ownership of the
involved application, and that the Office should be
advised if the ownership situation changed. The Board
never received any update on this point, and opposer’s
brief is silent with respect thereto.
According to Kenneth Baker, opposer’s chief
operating officer, opposer manufactures and sells a full
line of tubing, hose, fittings and accessories for
general and industrial use, including use in connection
with applications in the food and beverage industry.
Opposer has continuously used the mark NEWAGE on its
goods since 1951, with sales to the food and beverage
Opposition No. 100,940
5
industry commencing in the late 1960’s. The goods are
sold directly to end-users in the food and beverage
industry (including companies which purchase or maintain
beverage dispensing equipment), as well as to food and
beverage industry distributors. The goods are promoted
through trade shows (including restaurant shows), in
advertisements in Thomas Register and in trade industry
publications such as Beverage World, and through product
news releases and direct mailings.
Applicant is a customer of opposer’s, and has
purchased opposer’s goods which, according to Mr. Baker,
may be incorporated as a part of applicant’s beverage
dispensing machines. Applicant’s goods are sold to the
food service industry, including restaurants, and the
goods are advertised through industry trade shows, trade
magazines and catalogs.
We now turn to opposer’s likelihood of confusion
claim. With respect to priority of use, opposer’s
ownership of a valid and subsisting registration
establishes opposer’s priority. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are
Opposition No. 100,940
6
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, applicant’s mark
comprises the entirety of opposer’s mark, NEWAGE, with
the additional wording JET SPRAY. The issue of
likelihood of confusion must be determined based on a
comparison of the marks in their entireties, but in so
doing, it is not improper to give, for rational reasons,
more or less weight to a particular feature of a mark,
provided that the ultimate conclusion rests on a
consideration of the marks as wholes. That is, in
comparing marks in their entireties, the Board may
indicate that some feature of a mark is more distinctive
or significant than another, and may give greater force
and effect to that feature. See: Kangol Ltd. V.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992); and In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Opposition No. 100,940
7
Considering, in their entireties, the marks NEWAGE
and NEWAGE JET SPRAY, we are of the view that they are
similar in sound, appearance and meaning, and create
similar overall commercial impressions. The first term
in applicant’s mark is identical to the entirety of
opposer’s mark. Of course, applicant’s mark also
includes the words JET SPRAY. We have considered these
words of applicant’s mark in determining the issue of
likelihood of confusion. However, we have given greater
weight to the word NEWAGE in applicant’s mark, because it
is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered,
and we find that would be the case here. Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988). Moreover, the term JET SPRAY for beverage
dispensing machines appears to be suggestive, while the
term NEWAGE appears to be arbitrary as applied to the
involved goods. In this connection, we note that the
parties are unfamiliar with any third-party uses or
registrations of NEWAGE marks, or marks similar thereto,
in the food and beverage industry. Simply put, the
additional words in applicant’s mark are unlikely to
distinguish it from opposer’s mark.
Opposition No. 100,940
8
With respect to the goods, they need not be
identical or competitive in nature in order to support a
finding of likelihood of confusion, it being sufficient
for the purpose that the goods are related in some manner
and/or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by
the same persons under circumstances that could give
rise, because of the similarities between the marks used
thereon, to the mistaken belief that they originate from
or are in some way associated with the same source. See:
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and Chemical New
York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139
(TTAB 1986).
In the present case, the goods are related and
complementary. As explained by Mr. Baker, beverage
dispensing machines such as applicant’s incorporate
tubing of the type sold by opposer under its mark NEWAGE,
and applicant has admitted that its machines contain
plastic tubing. In point of fact, Mr. Baker testified
that applicant has been a customer of opposer’s tubing
which, according to Mr. Baker, could be used as a
component of or as a replacement part for applicant’s
machines.
Opposition No. 100,940
9
In addition, the record shows that the parties
advertise their goods in the same food and beverage
industry trade publications. Moreover, the parties’
goods travel in the same channels of trade to the same
classes of purchasers in the food and beverage industry.
We conclude that purchasers familiar with opposer’s
plastic tubing sold under the mark NEWAGE would be likely
to believe, upon encountering applicant’s mark NEWAGE JET
SPRAY for beverage dispensing machines, that the goods
originated with or were somehow associated with or
sponsored by the same entity.
Decision: The opposition is sustained and
registration to applicant is refused.