Rogers Petroleum, Inc.

Trademark Trial and Appeal Board

Apr 6, 2012

No. 77747951 (T.T.A.B. Apr. 6, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: April 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rogers Petroleum, Inc.
________

Serial No. 77747951
_______

Robert O. Fox of Luedeka Neely & Graham PC for Rogers
Petroleum, Inc.

Samuel E. Sharper, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Rogers Petroleum, Inc., filed an
application to register on the Principal Register the mark

Ser. No. 77747951
2
for “coffee prepared and sold onsite at Applicant's retail
convenience stores” in International Class 30.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark

previously registered on the Principal Register for
“coffee” in International Class 30,2 as to be likely to
cause confusion. In addition, the examining attorney
required applicant under Section 6 of the Trademark Act to
disclaim “PURE JAVA THE ORIGINAL ENERGY DRINK” apart from
the mark as shown.

1 Application Serial No. 77747951 was filed on May 29, 2009,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. Applicant subsequently filed an amendment
to allege use asserting October 1, 2009, as a date of first use
of the mark anywhere and in commerce. Applicant disclaimed
“ORIGINAL” and “ENERGY DRINK” in response to the examining
attorney’s above requirement.
2 Registration No. 2521766 issued December 25, 2001. The drawing
of the mark is lined for the color burgundy. Section 8 affidavit
accepted; Section 15 affidavit acknowledged.

Ser. No. 77747951
3
When the refusals were made final, applicant appealed.
The appeal is fully briefed.
Evidentiary Matters
Before turning to the substantive grounds for refusal,
we note that applicant submitted several exhibits with its
main brief. These exhibits consist of copies of third-
party registrations for PURE- and JAVA-formative marks
retrieved from the United States Patent and Trademark
Office’s (USPTO) Trademark Electronic Search System (TESS).
These exhibits were not previously submitted during
prosecution of the involved application. Rather, applicant
merely referred to a listing of these registrations with
its request for reconsideration. In his denial of the
request for reconsideration, the examining attorney
informed applicant that mere submission of a list of
registrations is insufficient to make them of record.3 See
TBMP § 1208.02 (3d ed. 2011) and authorities cited therein.
In view thereof, we agree with the examining attorney that
the exhibits attached to applicant’s brief are untimely,
and they have not been considered. See Trademark Rule
2.142(d) (the record in the application should be complete

3 The proper procedure to make such registrations or other
evidence of record after the examining attorney’s denial of
applicant’s request for reconsideration is to timely request
remand of the involved application for further examination. See
TBMP §1207.02 (3d ed. 2011).
Ser. No. 77747951
4
prior to the filing of an appeal). See also TBMP § 1207.01
(3d ed. 2011). We note, however, that had we considered
these exhibits in our determination of the issue on appeal,
the result would be the same. Furthermore, the listing
submitted with applicant’s request for reconsideration
consists solely of the third-party registration numbers and
marks, and contains no information regarding the goods or
services identified thereby or the status of the
registrations. As a result, the listing possesses no
probative value for purposes of our determination herein.
See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB
2010); and In re Red Bull GmbH, 78 USPQ2d 1375, 1380 (TTAB
2006).
We turn then to the substantive grounds for refusal of
registration.
Disclaimer
The examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act, 15 U.S.C.
§ 1056. Merely descriptive or generic terms are
unregistrable under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), and therefore are subject to
disclaimer if the mark is otherwise registrable. Failure
to comply with a disclaimer requirement is grounds for
Ser. No. 77747951
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refusal of registration. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re
Box Solutions Corp., 588 F.2d 811, 79 USPQ2d 1953 (TTAB
2006).
A term is merely descriptive if it immediately
describes a quality, characteristic or feature of the
goods. In re Abcor Development Corp., 200 USPQ 215, 217
(CCPA 1978). We look at the mark in relation to the goods,
and not in the abstract, when we consider whether the mark
is descriptive. In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1783 (Fed. Cir. 2003). It is well
settled that to be “merely descriptive” a term need only
describe a single significant quality or property of the
goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987).
In this case, the examining attorney has required
applicant to disclaim PURE JAVA THE ORIGINAL ENERGY DRINK,
that is, all of the wording in the mark, apart from the
mark as shown. The word JAVA is defined, in pertinent
part, as “brewed coffee.”4 PURE is defined as “free from
adulterants or impurities.”5 Based upon these definitions,
PURE JAVA may be defined as “brewed coffee that is free of
Ser. No. 77747951
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adulterants or impurities.” In addition, the examining
attorney made of record articles and advertisements from
the Lexis/Nexis database as well as Internet web pages and
blogs. The following examples are illustrative:
Jojo’s boasts that its coffee beans-
culled from all over the world and
roasted on-site - are “so fresh we have
to slap them.” … Their pure java tastes
great in a mochaccino or café au lait
with a sandwich, scone, cookie or other
delectable.
(connecticutmag.com);

… Oh yeah, and how about those flavored
coffee beans? Are they true coffee-
lover friendly? I would just call you
an “in-betweener” on the subject.
Still in all honesty, you aren’t jiving
with the pure java.
(ndspectrum.com);

Autumn’s Aspen View Flash Roast is made
from top-quality African and South
American coffee beans. Always fresh,
roasted within 5 days of sale, there
are no preservatives or chemicals to
mute the rich, smooth flavor of pure
java. Thus you’ll need to purchase in
smaller quantities, and brew within a
couple of weeks for prime, fresh
flavor.
(kevinmiller.typepad.com);

Seriously, I tend to stay away from
flavored coffees, because I have been
told that they can cause stones and

4 American Heritage® Dictionary of the English Language 4th 3d.
2000), submitted with the examining attorney’s August 28, 2009
Office action.
5 Id.
Ser. No. 77747951
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other related kidney issues. But as
far as the energy drinks go, I have
found most of them to taste like
carbonated weasel pee. My son likes
Vault, or Vault Zero (no sugar). I
have a lot of friends on my paintball
team that drink them before we compete
but I just plain prefer the original
energy drink, coffee.
(wildsurvive.com);

I’ll sometimes go through a whole 4
pack of Red Bull at work, on the days
that I drag. The habit’s getting to be
a drain on the wallet, though, so I
think I’m going back to the REAL
original energy drink…Black Coffee.
(straightdope.com);

Today I am reviewing Monster’s “Mean
Bean Java Monster.” They tout this as
“coffee + energy.” I don’t think that
the marketing team at Monster got the
memo that coffee is THE original
“energy drink,” and the only energy
drink that will EVER get 10 stars
(probably) here on FuzzMartin.com.
(fuzzmartin.com);

“The U.S. energy drink market is worth
%5.4 billion annually and coffee is the
original energy drink,” said John
Bello, Adina board member and co-
founder and former CEO of SoBe.
(marketwire.com); and

With finals coming up in less than a
week there is one thing I know I will
be stocking up on: coffee. Coffee,
the original energy drink, remains my
favorite beverage for getting energy in
the morning.
(dailyinfographic.com).
Ser. No. 77747951
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The evidence of third-party registrations submitted by
the examining attorney is of little probative value in
determining whether the mark involved herein is merely
descriptive. As often stated, each case must stand on its
own record and, in any event, the Board is not bound by the
actions of prior examining attorneys. See In re Nett
Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance
of such prior registrations does not bind the board or this
court”). See also In re International Taste Inc., 53
USPQ2d 1604, 1606 (TTAB 2000) (“With respect to third-party
registrations which include disclaimers ... we do not have
before us any information from the registration files as to
why an Examining Attorney required and/or why the
applicant/registrant offered such disclaimers”).
As discussed above, the wording PURE JAVA merely
describes brewed coffee that is free of impurities or other
additives. In addition, the evidence made of record by the
examining attorney demonstrates that, even in a burgeoning
energy drink market, coffee is widely recognized as THE
ORIGINAL ENERGY DRINK. As such, we find that the examining
attorney has made a prima facie showing that PURE JAVA THE
Ser. No. 77747951
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ORIGINAL ENERGY DRINK is merely descriptive of applicant’s
goods, i.e., “coffee prepared and sold onsite at
Applicant's retail convenience stores.” Applicant has not
presented any evidence to rebut this showing. Accordingly,
the examining attorney’s requirement that applicant
disclaim the wording PURE JAVA THE ORIGINAL ENERGY DRINK is
affirmed.
Likelihood of Confusion
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 outlined
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key, though 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
Similarity of the Goods
Turning first to our consideration of the identified
goods, we must determine whether consumers are likely to
Ser. No. 77747951
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mistakenly believe that they emanate from a common source.
It is not necessary that the goods at issue be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective goods are related
in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would
or could be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s “coffee prepared and sold
onsite at Applicant's retail convenience stores” is
encompassed by registrant’s more broadly recited “coffee,”
identified without limitation as to where it is prepared
and sold. As a result, the goods identified in the cited
registration are legally identical to those of applicant
for purposes of the second du Pont factor. Because the
goods are identical, we find that the second du Pont factor
weighs heavily in support of a conclusion that confusion is
likely.
Channels of Trade and Classes of Consumers
Ser. No. 77747951
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It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing 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”).
In this case, there are no restrictions in
registrant’s identification of goods as to the channels of
trade in which the goods may be encountered, or type or
class of customer to which the services are marketed.
Thus, in accordance with the above authority registrant’s
coffee must be presumed to move in all normal channels of
trade for such goods and be available to all classes of
potential consumers, including consumers of applicant’s
Ser. No. 77747951
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coffee that is prepared and sold in applicant’s retail
convenience stores. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Absent specific limitations in the
registration, when the goods are legally identical we must
assume that the channels of trade and purchasers are also
the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); and In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
Therefore, the channels of trade and purchasers must
be considered to be the same, and this du Pont factor also
favors a finding of likelihood of confusion.
Similarity of the Marks
We now consider the similarity of the marks, noting
initially that, “[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
Ser. No. 77747951
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confusion declines.” See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992). See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB
1980).
Turing to the marks at issue, we find applicant’s mark
is quite similar to registrant’s mark:

We note that they contain the nearly identical term PURE
JAVA or PURJAVA as the most visually distinctive portion
thereof. PURE JAVA and PURJAVA are identical in meaning
and similar in appearance. The sound of the marks also may
be identical, with many or even most purchasers pronouncing
“pur” as “pure.” With regard to THE ORIGINAL ENERGY DRINK
portion of applicant’s mark, we observe that such wording
appears in very small letters compared to PURE JAVA and
thus is visually much less prominent.
The branch and irregular geometric shapes in
applicant’s mark, though visually somewhat prominent, are
less significant than the wording PURE JAVA therein. This
is because when a mark comprises both wording and a design,
Ser. No. 77747951
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the wording would be used by customers to request the
identified goods or services. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Similarly, the
coffee cup design in registrant’s mark, while visually
prominent, would not be used by consumers to request
registrant’s goods and thus is subordinate to PURJAVA.
Further, we observe that in applicant’s mark, the branch
appears to grow out of the letter “P” in the word PURE and
the irregular geometric shapes essentially frame the term
PURE JAVA. Likewise, the handle of the steaming coffee cup
design in registrant’s mark forms the letter “P” in the
term PURJAVA. Thus, the designs in both marks appear to
reinforce the terms PURE JAVA and PURJAVA and the
commercial impression engendered thereby rather than
creating a separate and distinct impression.
With regard to the strength of the marks at issue, as
discussed above we found, inter alia, that the wording PURE
JAVA in applicant’s mark is merely descriptive and must be
disclaimed. The record of this case thus supports a
finding that PURE JAVA is weak as applied to applicant’s
goods. We observe that registrant’s mark is registered on
the Principal Register without a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act or
a disclaimer of PURJAVA. Further, there is no evidence of
Ser. No. 77747951
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record regarding third-party use of PURJAVA. Thus, on this
record we cannot conclude that PURJAVA is merely
descriptive as applied to the goods. In any event, even if
we were to find that PURJAVA is weak as applied to coffee,
even suggestive or weak marks are entitled to protection
from the use of a very similar mark for legally identical
goods or services. See In re Chica Inc., 84 USPQ2d 1845,
1850 (TTAB 2007).
In addition, we observe that applicant’s disclaimer of
the wording in its mark does not influence our
determination of the similarity of the marks. As the
wording of the disclaimer indicates (i.e., “no claim is
made to the exclusive use of … apart from the mark as
shown” – emphasis added), the disclaimed matter is accorded
significance as an integral part of the composite mark.
See American Dietaids Company, Inc. et al. v. Plus
Products, 191 USPQ 146 (DCNY 1976). The disclaimer of
matter in a mark does not have the effect of removing the
matter from the mark. Bordon, Inc. v. W.R. Grace & Co.,
180 USPQ 157 (TTAB 1973). It is well established that a
disclaimer is of no legal significance in determining
likelihood of confusion, rather, the disclaimed matter must
be considered. See Kellogg Co. v. Pack “Em Enterprises
Inc., 14 USPQ2d 1545 (TTAB 1990) aff’d, 951 F.2d 1142,
Ser. No. 77747951
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21 USPQ2d 1142 (Fed. Cir. 1991); and Glamorene Products
Corp. v. Boyle-Midway, Inc., et al., 188 USPQ 145 (DCSDNY
1975). Moreover, the public viewing the mark is unaware of
what, if any, portions of a mark may be disclaimed in a
federal registration. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, it is
well settled that impulse purchasers of low cost ordinary
consumer items, such as coffee, are held to a lesser
standard of purchasing care and are more likely to be
confused as to the source of the goods. See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281 (Fed. Cir. 1984).
In this case, the most prominent portion of
applicant’s mark, i.e., PURE JAVA and the equally prominent
portion of registrant’s mark, i.e., PURJAVA are highly
similar in appearance, sound and meaning such that, when
viewed in their entireties, the marks convey highly similar
commercial impressions.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Summary
In summary, we have considered all of applicant’s
arguments and evidence in support or registration,
including any evidence not specifically discussed herein.
Ser. No. 77747951
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Weighing all of the relevant du Pont factors, we find that
a likelihood of confusion exists.
Decision: The refusal of registration under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion is affirmed. The refusal of registration under
Section 6 of the Trademark Act absent a disclaimer of PURE
JAVA THE ORIGINAL ENERGY DRINK is also affirmed.