Trilliant Food and Nutrition, LLC

Trademark Trial and Appeal BoardJul 6, 2017

No. 86855354 (T.T.A.B. Jul. 6, 2017)

This Opinion is not a Precedent of the TTAB Mailed: July 6, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Trilliant Food and Nutrition, LLC _____ Serial No. 86855354 _____ Kyle T. Peterson of Patterson Thuente Pedersen, P.A., for Trilliant Food and Nutrition, LLC. Sarah Hopkins, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Quinn, Adlin, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Trilliant Food and Nutrition, LLC seeks registration on the Principal Register of the mark ENRG, in standard characters, for “coffee for use in single-serve brewing machines” in International Class 30.1 1 Application Serial No. 86855354 was filed on December 21, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Applicant subsequently filed an amendment alleging use anywhere and in commerce as of December 1, 2016, and the amendment has been accepted. Serial No. 86855354 - 2 - The Trademark Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark with “energy” disclaimed, previously registered on the Principal Register for “coffee and tea” in International Class 30,2 as to be likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant requested reconsideration and appealed to this Board. After reconsideration was denied, the appeal resumed and is fully briefed.3 We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 2 Registration No. 3645852, issued June 30, 2009; § 8 declaration of use accepted January 26, 2016. The description of the mark states: “The mark consists of the wording ‘ENERG’ and a stylized lightning bolt ‘I’.” Color is not claimed a as feature of the mark. 3 Applicant attached 27 pages of TSDR printouts of third-party registrations to its appeal brief. Some or all of these may be duplicative of Applicant’s previously submitted evidence. To the extent any of the evidence was not submitted during prosecution of the application, it is untimely and has not been considered. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d)); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1080 (TTAB 2010). Serial No. 86855354 - 3 - 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.”). We first consider the second and third du Pont factors, the similarity of the goods, channels of trade, and classes of customers. To support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that the goods originate from the same source or there is an association or connection between their sources. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must look to the goods as identified in the involved application and cited registration, not to any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Where, as here, there are no limitations in the identification of goods in either the application or the cited registration, we must presume that the identified goods encompass all goods of the nature and type described therein. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016). A likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Serial No. 86855354 - 4 - Registrant’s identified goods are “coffee and tea,” while Applicant’s identified goods are “coffee for use in single-serve brewing machines.” Registrant’s “coffee” encompasses Applicant’s more narrowly identified goods. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Thus, these goods are legally identical, and the second du Pont factor weighs heavily in favor of finding a likelihood of confusion. Applicant contends that the respective goods will travel in different trade channels and be marketed to different consumers. See Appeal Brief at 4-5, 11 TTABVUE 5-6. This argument overlooks the fact that, because Registrant’s goods and Applicant’s identified goods are legally identical, we must presume that the channels of trade and classes of purchasers are the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). The Examining Attorney, moreover, introduced extensive evidence that third parties offer coffee for use in single-serve brewing machines along with coffee in other types of packaging on the same websites under the same mark. These third-party uses include, among others: • STARBUCKS4 • PEET’S COFFEE5 4 December 12, 2016 final Office action at 23-26. 5 Id. at 27-30. Serial No. 86855354 - 5 - • CARIBOU COFFEE6 • THE COFFEE BEAN & TEA LEAF7 • DUNKIN’ DONUTS8 • GLORIA JEAN’S COFFEES9 • FOLGERS10 In addition, the Examining Attorney made of record at least 16 existing, use-based third-party registrations for the kinds of goods identified by both Applicant and Registrant.11 This evidence of third-party use and registration shows that the goods are of a type that may emanate from a single source under the same mark. See, e.g., In re i.am.symbolic, llc, 116 USPQ2d 1406, 1412 (TTAB 2015). The third du Pont factor also strongly supports a finding that confusion is likely. We next consider the du Pont likelihood of confusion factor focusing on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” 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, 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 6 Id. at 31-33. 7 Id. at 34-39. 8 February 11, 2017 denial of request for reconsideration at 5-6. 9 Id. at 7-14. 10 Id. at 28-31. 11 These registrations identify, for example, coffee, whole bean coffee, or ground coffee as well as coffee pods or coffee sold in single serve cup containers. See id. at 41-87. Serial No. 86855354 - 6 - 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) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). When, as here, marks would appear on goods that are legally identical, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). Applicant’s mark is ENRG, in standard characters, which is visually distinguishable from the cited mark , particularly through the replacement of the final letter with a stylized lightning bolt in the cited mark. Otherwise, however, the marks are highly similar. Applicant admits that both can be pronounced as “energy.” See Appeal Brief at 10, 11 TTABVUE 11. While there is no correct pronunciation of a mark, we agree that consumers would be highly likely to verbalize both marks identically as the phonetically equivalent term “energy,” and thus also to view them as conveying the same meaning and overall commercial impression. Considered as a whole, we find the marks to be highly similar. The first du Pont factor thus also supports a finding that confusion is likely. Next, we consider Applicant’s argument that the term ENRG is weak because third parties have registered marks incorporating ENERGY and variations for coffee goods. See Appeal Brief at 7-9, 11 TTABVUE 8-10. Applicant submitted printouts Serial No. 86855354 - 7 - from the Office’s Trademark Status & Document Retrieval (TSDR) database of the following use-based registrations for coffee-related goods registered to third parties on the Principal or Supplemental Register:12 Registration No. Mark Selected Goods (in Class 30) 1 4971631 SPILL-PROOF ENERGY (“energy” disclaimed) Coffee-based snack foods 2 4220726 GO COFFEE ENERGY (“coffee energy” disclaimed) Coffee; coffee beans; ground coffee beans; roasted coffee beans; sugar- coated coffee beans 3 4635654 EVOLVING ENERGY Coffee 4 3061835 ENERJAVA Coffee and coffee products, namely, caffeine enhanced ground coffee 5 4398031 ENERGY BEANS (“beans” disclaimed) Chocolate covered roasted coffee beans 6 4350152 EARTHLY ENERGY ENJOY Beverages made of coffee; beverages with a coffee base; coffee; coffee-based beverages; etc. 7 5002895 BALANCED ENERGY Coffee-based beverages Our primary reviewing court, the Court of Appeals for the Federal Circuit, has instructed that evidence of extensive use and registration of a term by others as a mark can be “powerful on its face, even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (Jan. 25, 2016) (quotation omitted). 12 Reconsideration request, 4 TTABVUE 15-41. Only use-based registrations are included in the chart. Serial No. 86855354 - 8 - Here, Applicant’s third-party registration evidence does not establish that the cited mark is either so inherently weak or so diluted that confusion is unlikely to result from registration of the highly similar mark ENRG for legally identical goods. Applicant’s evidence does not approach the quantum of use and registration evidence in Jack Wolfskin. In addition, unlike the marks before us, all of the third-party registrations in evidence concern marks with additional differentiating characteristics, not variants of the single word ENERGY. (The only single-word mark, ENERJAVA, is essentially a telescoped combination of “energy” and “java.”) We find that Applicant’s evidence does not establish that customers have been educated to distinguish between different marks on the basis of minute distinctions. It has been stated many times that we must decide each case on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 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.”); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (noting that third-party registrations “cannot justify the registration of another confusingly similar mark”) (citations omitted). Even were we to find that third-party marks limit the scope of protection afforded to the cited registration, marks considered “weak” are nonetheless entitled to protection from registration by a subsequent user of a confusingly similar mark for legally identical goods. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Serial No. 86855354 - 9 - Finally, we address Applicant’s contention that its customers are sophisticated. Applicant argues that: “As evidenced by Applicant’s description of goods, the ENRG mark will only be used by consumers for use in single-serve brewing machines. Consumers who purchase these specialized coffee products are generally sophisticated and knowledgeable about machine compatibility for specific single- serve coffee brewers.” Appeal Brief at 5, 11 TTABVUE 6. Applicant submitted no evidence in support of this argument, which concerns the fourth du Pont factor, the “conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” Id., 177 USPQ at 567. We do not find the record evidence sufficient to establish that the goods identified in the subject application and cited registration are necessarily sold only to discriminating customers. Because there are no limitations in the cited registration, we presume that Registrant’s goods are available to all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). Precedent requires that we base our decision on the least sophisticated potential purchasers. Stone Lion, 110 USPQ2d at 1163. For these reasons, we find the fourth du Pont factor to be neutral. We have considered all of the arguments and evidence of record as they pertain to the relevant du Pont likelihood of confusion factors. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. Serial No. 86855354 - 10 - We have found that the goods identified in the subject application and cited registration are legally identical in part and move in the same channels of trade to the same customers; Applicant’s mark is similar to the cited mark; and the remaining du Pont factors are neutral. We find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 3645852 when used in association with the goods identified in the application. Decision: The refusal to register Applicant’s mark is affirmed.