87 North Enterprises, LLC

Trademark Trial and Appeal Board

Sep 17, 2019

87734771 (T.T.A.B. Sep. 17, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 87 North Enterprises, LLC
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Serial No. 87734771
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Matthew J. Ladenheim of Trego Hines & Ladenheim PLLC
for 87 North Enterprises, LLC.
Bridget Watson, Trademark Law Clerk, Law Office 128,1
Travis Wheatley, Managing Attorney.
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Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
87 North Enterprises, LLC (“Applicant”) seeks to register on the Principal
Register the composite mark displayed below with COFFEE disclaimed,

1 A Trademark Law Clerk is someone hired to eventually be a full Trademark Examining
Attorney, but who, as of his or her start date, had not been admitted to a bar. Ex parte
prosecution was handled by Mayur Vaghani, Examining Attorney, Law Office 124.
Serial No. 87734771
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for “coffee” in International Class 30 and “restaurant services” International Class
43.2
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered mark CRU KAFE in standard characters for “coffee” in International Class
30,3 that it is likely to cause confusion or mistake or to deceive.
The appeal of the final refusal is now briefed.4 For the reasons explained below,
we affirm the refusal to register.

2 Application Serial No. 87734771, filed December 26, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a). The description of the mark is as follows: “The mark
consists of the stylized lettering ‘kru’ wherein the ‘u’ contained the graphic representation of
a liquid with bubbles, appearing over the stylized wording ‘coffee.’” Color is not claimed as a
feature of the mark.
3 Registration No. 4783197, registered July 28, 2015. The mark appears on the drawing page
as CRU Kafe but this does not change the nature of the mark from a standard character mark
to a special form mark. See In re Calphalon Corp., 122 USPQ2d 1153 n.1 (TTAB 2017) (citing
In re Star Belly Stitcher, Inc., 107 USPQ2d 2059 n.1 (TTAB 2013)). Our reference to the mark
in all uppercase letters reflects the fact that a term registered as a mark in “standard
character” form is not limited to any particular font style, size, or color.
4 Applicant’s submission of materials already of record with its brief was superfluous.
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I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each du Pont factor for which there is evidence or argument.
See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). When analyzing these factors, the overriding concerns are not only to prevent
buyer confusion as to the source of the goods, but also to protect the registrant from
adverse commercial impact due to use of a similar mark by a newcomer. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 the
other relevant du Pont factors, are discussed below.
A. The Marks

The first du Pont likelihood of confusion factor involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005) (citing du Pont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13,
2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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). Our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”).
Applicant argues that because the graphic design in its mark, “which creates the
illusion of a beverage, is integral to, and forms the dominant feature of the mark.”
Brief, p. 6; 4 TTABVUE 7. Applicant asserts that prospective consumers will be
naturally drawn to that portion of the mark as opposed to the literal portions, thereby
distinguishing the marks. In addition, Applicant contends that the phonetic
equivalency of KRU and CRU is an insufficient basis for finding similarity.
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We acknowledge the visual differences in the marks Applicant relies upon. That
being said, we find that the literal portions of Applicant’s and Registrant’s marks,
KRU COFFEE and CRU KAFE, are aurally similar. Each mark is comprised of two
terms and three syllables; each commences with the distinctive phonetically
equivalent terms KRU and CRU; and each ends with the similar sounding terms
“coffee” and “kafe.” KAFE could be pronounced as “café.” See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (there is no correct pronunciation
of a mark because it is impossible to predict how the public will pronounce a coined
term); see also In re The Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 227 (CCPA
1969). Similarity in sound alone may be sufficient to support a finding that the marks
are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988);
see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007).
With respect to the design element in Applicant’s mark, we find that the stylized
letter “u” resembling a cup of hot coffee is subordinate to the literal terms. It is an
often-recited principle that when a mark consists of a literal portion and a design
portion, the literal portion is usually more likely to be impressed upon a purchaser’s
memory and to be used in calling for the goods or services; therefore, the literal
portion is normally accorded greater weight in determining whether marks are
confusingly similar. See, e.g., Viterra, 101 USPQ2d at 1911; In re Dakin’s Miniatures,
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d
1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98
USPQ2d 1261, 1267-68 (TTAB 2011). We do not find In re Covalinski, 113 USPQ2d
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1166 (TTAB 2014) which presented an exception to this rule, to be particularly
relevant here. The involved mark in that case included design features that played a
much more prominent role than those of Applicant’s mark:

The Board, in finding the design to be the dominant element, provided the following
rationale:
Here, Applicant’s design mark includes the very large,
prominently displayed letters RR. The bodies of the Rs are
filled with a checkerboard pattern resembling a racing flag.
To each R an elongated horizontal “leg” of gradually
increasing thickness is appended, each of which ends in a
heart design. Inside the legs appear the rest of the letters
(i.e., the letter strings “edneck” and “acegirl”), in a form in
which the initial letters of each string are displayed in
relatively tiny typeface and subsequent letters are
displayed in increasing thickness. Together, these graphic
devices serve not only to draw attention to the RR letters
apart from the wording, but also make the letters that form
the “a-c-e” of the word “RACEGIRL” difficult to notice.
Since these goods are clothing, consumers would be likely
to encounter the mark in a retail setting on hang tags or
neck labels. In that context, the visual impression of the
mark is likely to be more important.

Id. at 1168. None of these reasons are present in this case. That is to say, the wording
KRU COFFEE does not appear in “relatively tiny typeface” in a letter string “difficult
to notice.” To the contrary, the font is large, bold, easy-to-read lettering. In fact, the
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depiction of the letter “u” as a cup of hot coffee merely reinforces the literal elements
of the mark.
For the foregoing reasons, we find that overall Applicant’s and Registrant’s marks
are similar in sound, connotation and commercial impression. This first du Pont
factor weighs in favor of finding a likelihood of confusion.
B. The Goods
Next, we compare the goods and services as they are identified in the involved
application and cited registration, the second du Pont factor.5 See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The goods need not be identical or even
competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that [the goods] emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of relatedness may
include news articles and/or evidence from computer databases showing that the
relevant goods are used together or used by the same purchasers; advertisements

5 Applicant presented no arguments regarding this du Pont factor in its brief.
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showing that the relevant goods are advertised together or sold by the same
manufacturer or dealer; and/or copies of prior use-based registrations of the same
mark for both applicant’s goods and the goods listed in the cited registration. See, e.g.,
In re Davia, 110 USPQ2d at 1817 (finding pepper sauce and agave related where
evidence showed both were used for the same purpose in the same recipes and thus
consumers were likely to purchase the products at the same time and in the same
stores).
To state the obvious, Applicant’s goods identified as “coffee” in International Class
30 are identical to the goods in the cited registration. With regard to Applicant’s
“restaurant services” International Class 43, the Examining Attorney has submitted
substantial evidence demonstrating that it is common for coffee to be sold in
restaurants under the same brand name. See excerpts from the Dunkin Donuts, Peets
Coffee, Starbucks, Coffee Beanery, and Caribu Coffee websites advertising coffee and
restaurant services under the same mark submitted with April 10, 2018 Office action.
We are aware that coffee merely being served in a restaurant is not sufficient by itself
to show that these goods and services are related, and that “something more” is
required. See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed.
Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641,
642 (CCPA 1982)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB
2011). Here, however, the evidence shows that third parties have adopted a single
mark to identify both coffee and restaurant services. And given the national scope of
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these franchises, the evidence shows “a substantial overlap” between restaurant
services and coffee with respect to source. See Coors, 68 USPQ2d at 1063-64.
In view thereof, we find that the International Class 30 goods identified in the
application and registration are identical, and that the International Class 43
services are related to Registrant’s goods. As such, this second du Pont factor also
favors a finding of likelihood of confusion.
C. Channels of Trade
We direct our attention now to the established, likely-to-continue channels of
trade, the third du Pont factor.
As noted above, Applicant’s goods identified as “coffee” in International Class 30
are identical to the goods in the cited registration. As such, because these goods are
identical and unrestricted as to trade channels, we must also presume that these
particular goods travel in the same ordinary trade and distribution channels and will
be marketed to the same potential consumers. See Viterra, 101 USPQ2d at 1908 (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) (where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
With regard to Applicant’s “restaurant services” International Class 43, because
the identification in the cited registration has no restrictions on channels of trade, we
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must presume that Registrant’s “coffee” travels in all channels of trade appropriate
for such goods, which the record shows includes restaurants. See Viterra, 101
USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at
1005).
Accordingly, the third du Pont factor regarding the similarity or dissimilarity of
established, likely to continue trade channels also favors a finding of likelihood of
confusion.
D. Strength of the Cited Mark

We will now consider the number and nature of similar marks in use on similar
goods and the commercial strength of the cited mark. In an ex parte appeal, “[t]he
purpose of [an applicant] introducing third-party uses is to show that customers have
become so conditioned by a plethora of such similar marks that customers have been
educated to distinguish between different such marks on the bases of minute
distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted).
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal
citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s
mark can come without causing a likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection.” Id. at 1676 (internal
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citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party
use of similar marks on similar goods is relevant to show that a mark is relatively
weak and entitled to only a narrow scope of protection.”). “In determining the
strength of a mark, we consider both its inherent strength based on the nature of the
mark itself and its commercial strength, based on the marketplace recognition value
of the mark.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic
of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”)).
Active third-party registrations may be relevant to show that a mark or a portion
of a mark is descriptive or suggestive. See, e.g., also Jack Wolfskin, 116 USPQ2d at
1136; Juice Generation, 115 USPQ2d at 1675-76; In re Hartz Hotel Servs., Inc., 102
USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB
1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly
used in this limited manner, third-party registrations are similar to dictionaries
showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6
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USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d
1172, 1174 (TTAB 1987).
Applicant maintains that CRU, or the phonetic equivalents KRU and CREW are
“commonly used in the market place” and thus entitled to a narrow scope of protection
as applied to coffee. 4 TTABVUE 7. In support thereof, Applicant has made of record
the following Principal Register third-party registrations:
Registration No. 2265076 for the mark displayed below

for “coffee and tea” in International Class 30;
Registration No. 3485393 for the mark BREW FOR THE
CREW for “coffee” in International Class 30;
Registration No. 3739982 for the mark BOO CREW for
“candy” in International Class 30;
Registration No. 4575659 for the mark CREW CUP
COFFEEWORKS for “coffee beans” in International Class
30;
Registration No. 4772874 for the mark displayed below

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for “Hats; T-shirts” in International Class 25; “Electronic
cigarette liquid (e-liquid) comprised of flavorings in liquid
form used to refill electronic cigarette cartridges” in
International Class 30; and “Electronic cigarettes” in
International Class 34;
Registration No. 4863195 for the mark ROAD CREW
CRUNCH for “Cereal based snack food” in International
Class 30;
Registration No. 4982163 for the mark displayed below

for “drinking glasses” in International Class 21; “Seafood,
not live; crabs, not live; fish-based spreads; seaweed salad;
tuna salad; seafood salad; crab cakes; fish cakes” in
International Class 29; and “pies; tarts; sauces; cocktail
sauce” in International Class 30;
Registration No. 5128400 for the mark THE COLD BREW
CREW for “coffee” in International Class 30; and
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Registration No. 5334630 for the mark JAVA CREW for
“Chocolate food beverages not being dairy-based or
vegetable based; Coffee-based beverage containing milk;
Coffee beans; Coffee and tea; Chocolate covered roasted
coffee beans” in International Class 30.
See October 10, 2018 Response to Office Action.
Registration Nos. 3739982, 4772874, 4863195, and 4982163 are for goods unrelated
to coffee. The remaining five registrations incorporate the word CREW within
phrases that engender a different meaning than the cited mark.6 Thus, these
registrations are of minimal, if any, probative value because we cannot determine
from the face of the registrations whether the term “cru” or the phonetic equivalent
thereof is descriptive, generic, or so highly suggestive of “coffee” and therefore weak
or deserving of a lesser degree of protection based on the registrations.
In addition, the record is devoid of examples of actual use of marks comprised of
CRU or the phonetic equivalent thereof (other than “crew,” which has a particular,
unrelated meaning) in connection with Registrant’s goods or goods related thereto.
Overall the evidence fails to show that “customers have become so conditioned by a
plethora of such similar marks that customers have been educated to distinguish
between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694. See also Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115
USPQ2d at 1675-76 (internal citations omitted). Indeed, Applicant appears to
misunderstand the appropriate level of evidence to support a determination that a

6 For this same reason, Applicant’s argument that the extent of potential confusion due to
the existence of these third-party registrations is de minimus fails as well.
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cited mark is weak. See In re Inn at St. John’s, 126 USPQ2d at 1745-46 (discussing
limited probative value of a few third-party registrations in absence of evidence of
third-party use). Accordingly, this factor is neutral.
II. Conclusion
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. The similarities of the marks coupled with the
identical nature of the goods, related services and overlapping trade channels leads
us to the conclusion that prospective consumers are likely to confuse the source of the
involved goods. The remaining factors discussed above are neutral, and we treat as
neutral any du Pont factors for which there is no evidence of record.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
both classes of goods and services.