Sociedad Cooperativa Limitada De Comercializacion

Trademark Trial and Appeal BoardSep 9, 2013

No. 85365179 (T.T.A.B. Sep. 9, 2013)

Mailed: September 9, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sociedad Cooperativa Limitada De Comercializacion _____ Serial No. 85365179 _____ Jeffrey M. Furr of Furr Law Firm for Sociedad Cooperativa Limitada De Comercializacion. Laurie Kaufman, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _____ Before Kuhlke, Taylor and Masiello, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Sociedad Cooperativa Limitada De Comercializacion (“applicant”) seeks registration on the Principal Register of the mark ORO LIQUIDO (in standard characters) for goods ultimately identified as “Olive oil” in International Class 29 and “Honey, paprika powder” in International Class 30.1 The examining attorney finally refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used on or in connection 1 Application Serial No. 85365179 filed July 7, 2011 and claiming September 22, 2010 as the date of first use anywhere and in commerce of the goods in Class 29 and May 24, 2010 as the date of first use anywhere and in commerce of the goods in Class 30. The application includes the following translation statement: “The English translation of ORO LIQUIDO in the mark is LIQUID GOLD.” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85365179 2 with the identified goods, so resembles the mark in U.S. Registration No. 3954877, OROLIQUIDO (standard characters) for “Nut butters; Marcona almond butter” in International Class 29,2 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant appealed and requested reconsideration of the final refusal. The examining attorney denied the request for reconsideration and this appeal was resumed on September 19, 2012. Both applicant and the examining attorney filed briefs. We affirm. 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 the issue of likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. We first turn to the marks and compare applicant’s mark ORO LIQUIDO with the OROLIQUIDO mark in the cited registration by considering the similarity, or differences, in the appearance, sound, connotations and overall commercial impressions. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their 2 Issued May 3, 2011. The registration includes the following translation statement. “The English translation of ‘oro’ in the mark is gold and ‘liquido’ is liquid.” Serial No. 85365179 3 overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. In this case, both marks contain phonetically equivalent terms. The only difference between them is that applicant presents its mark as two distinct words and the registrant presents its mark as a compound word. Contrary to applicant’s contention, the space between the terms “oro” and “liquido” in its mark or, put another way, the absence of a space between the same terms in the cited registered mark, does not distinguish the marks. See e.g., Stockpot, Inc. v. Stock Pot Restaurant, Inc. 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.”); and In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical.”). Phonetically the marks are identical, visually they are virtually identical and, as demonstrated by the translations, the connotations of the marks are essentially the same. Accordingly, we find applicant’s mark and the cited registered mark to convey the same overall commercial impression. We consider next whether the goods as identified in the respective identifications are, or are not, related. It is well-established that the goods need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient 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, because of the similarity of the marks, give rise Serial No. 85365179 4 to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Moreover, the greater the degree of similarity between the applicant’s mark and the registered mark, the lesser the degree of similarity between applicant’s goods and registrant’s goods that is required to support a finding of likelihood of confusion. In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Where, as in this case, the applicant’s mark is virtually identical to the registrant’s mark, there need only be a viable relationship between the goods to find that there is a likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688- 1689 (Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Here, we compare applicant’s olive oil, honey and paprika powder with registrant’s nut butters and Marcona almond butter. The examining attorney maintains that applicant’s goods are highly related to registrant’s goods because “it is common for companies that provide olive oil, honey and/or paprika and nut butters to market them under the same trademarks.” Examining Attorney’s br. unnumbered p. 5. To support her position, the examining attorney made of record with her initial office action copies of various use-based, third-party registrations showing goods of the same types as those of applicant and registrant offered by the same entity under the same mark. Third-party registrations that individually cover different items and that are based Serial No. 85365179 5 on use in commerce serve to suggest that the listed goods and services are of a type that may emanate from a single source. See Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source”). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). These registrations include: Registration No. 2592336 for, inter alia, olive oil and honey and nut butters and almond nut butters; Registration No. 3802363 for, inter alia, extra virgin olive oils and honey and nut butters; Registration No. 3906374 for, inter alia, honey and nut butters; Registration No. 3136604 for, inter alia, honey and peanut and other nut butters; Registration No. 3092572 for, inter alia, olive oil for culinary purposes, honeys, seasonings and spices3 and nut butters; Registration No. 3050845 for, inter alia, olive oil and almond butter; and Registration No. 3968965 for, inter alia, food products, namely, olive oil, spices and honey and food products, namely, nut butters, namely cashew butter and almond. In addition to the third-party registrations, the Examining Attorney made of record with the Final Office Action issued March 17, 2012, screenshots from various websites showing that it is common for companies that provide olive oil and/or honey and nut butters to market them under the same trademarks. For example, the website for Organiqelle (www.organiqelle.com) 3 We consider the term “spices” broad enough to include paprika powder. Serial No. 85365179 6 offers a variety of nut butters (natural almond butter, natural cashew nut butter, and natural peanut butter) in addition to a pair of honeys (clover honey and wild honey) and markets them to the public under the Organiqelle mark. Similarly, the website for Brad’s Organic (www.bradsorganic.com) offers several organic extra virgin olive oils, honey, and nut butters (peanut butter, almond butter, and cashew butter) and markets them to the public under the mark Brad’s Organic. Last, the website for Cadia (www.mycadia.com) offers a selection of olive oil and nut butters and markets them under the mark Cadia. Based on the goods as identified, we conclude that applicant’s and registrant’s goods are all food products in the nature of pantry staple condiments and spices. In addition, the record suggests that olive oil, honey, paprika powder and nut butters may emanate from the same source. We thus find that applicant’s and registrant’s goods are commercially related such that, when identified by virtually identical marks, namely ORO LIQUIDO and OROLIQUIDO, confusion as to source is likely. We simply are not persuaded by applicant’s unsupported assertion that the goods associated with each mark have a different focus and purpose. Furthermore, where the goods in an application or cited registration are broadly described, such that there are no restrictions as to trade channels and purchasers, it is presumed that the identification of goods encompasses not only all goods of the nature and type described therein, but that the identified goods are provided in all channels of trade which would be ordinary therefor, and that they would be purchased by all potential customers. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). In re Elbaum, 211 USPQ 639 (TTAB 1981). Serial No. 85365179 7 Accordingly, we presume that the goods identified by the involved application and cited registration will be offered in all usual channels of trade for such goods, including grocery stores, and to all usual classes of purchasers, including the general public seeking such food items. We thus find, at a minimum, that the channels of trade and classes of purchasers overlap. Applicant also argues in favor of a finding of no likelihood of confusion that applicant and registrant have been using their marks with the listed goods in the United States for over two years with no actual confusion as to the source of the respective goods. However, there is nothing in the record that allows us to determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. More importantly, in the context of an ex parte proceeding, “the lack of evidence of actual confusion carries little weight.” In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). We therefore conclude that the actual-confusion factor is neutral in this case. Last, applicant contends that it uses its mark extensively throughout the world and that the mark has become “distinctive” with respect to applicant’s goods. Applicant also submitted a copy of an EU registration of a variant mark, ORO LIQUIDO COATA, with a registration date of October 10, 2011. Besides the fact that the registration is for a different mark, applicant’s registration and use of the mark outside of the United States are of no relevance in this case. Moreover, to the extent that applicant, by its submission of the EU registration, is asserting that it has a right to exclude others from the use of the same or a similar mark, such an assertion constitutes an impermissible collateral attack on the validity of the cited registration. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the Serial No. 85365179 8 registrant’s ownership of the mark and of the registrant’s right to use the mark in connection with the goods or services identified in the certificate. During ex parte prosecution, including an ex parte appeal, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., applicant’s asserted superior rights). In re Dixie Restaurants, Inc. 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). See TMEP § 1207.01(d)(iv)(5th ed. 2007). Accordingly, no consideration has been given to applicant’s argument in this regard. In sum, because we find the marks virtually identical, the goods closely related, and the channels of trade and purchasers overlapping, confusion is likely between applicant’s mark and the mark in the cited registration. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed as to both classes of goods.