A & T Tobacco Imports Inc., Twinkle, Inc., and Tobacco Marketers NA LLCv.Shisha Land Wholesale Inc.

Trademark Trial and Appeal Board

Apr 27, 2017

No. 91215217 (T.T.A.B. Apr. 27, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 27, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
A & T Tobacco Imports Inc.,
Twinkle, Inc., and
Tobacco Marketers NA LLC
v.
Shisha Land Wholesale Inc.
_____

Opposition No. 91215217

_____

Daniel E. Kattman of Reinhart Boerner Van Deuren, s.c. for
A & T Tobacco Imports Inc., Twinkle, Inc. and Tobacco Marketers NA LLC

Kevin Shenkman of Shenkman & Hughes PC for
Shisha Land Wholesale Inc.
_____
Before Kuhlke, Taylor and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
Opposition No. 91215217

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Shisha Land Wholesale Inc. (“Applicant”) seeks registration on the Principal
Register of the mark BLACK DIAMOND in standard characters (“Application”)1 for
“Smokers’ articles, namely, hookah charcoal” in International Class 34.
A & T Tobacco Imports Inc., Twinkle, Inc., and Tobacco Marketers NA LLC oppose
registration of the mark based on alleged likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d) with Twinkle, Inc.’s registered marks,
shown below:
Mark Reg. No. Reg. Date Goods
DOUBLE
DIAMOND
2439290 March 27,
2001
Cigarettes (Class 34)
DOUBLE
DIAMOND
3441357 June 3, 2008 Roll your own tobacco, cigars and filters for
tobacco (Class 34)
MISS DIAMOND 2691588 Feb. 25, 2003 Cigarettes (Class 34)
2578451 June 11, 2002 Cigarettes (Class 34)
2693056 March 4, 2003 Cigarettes (Class 34)
DIAMOND 4008486 Aug. 9, 2011 Filtered cigars, small cigars and little cigars (Class
34)
DIAMOND
CLUB
3857173

Oct. 5, 2010 Cigars, namely, filtered cigars, small cigars and
little cigars (Class 34)

1 Application Serial No. 86048868, filed on August 27, 2013, based on Applicant’s allegation
of its intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91215217

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In its answer, Applicant denies the salient allegations in the notice of opposition.
I. Evidentiary Record

Neither party introduced any testimony in this case. Opposer submitted a July 25,
2016 Notice of Reliance, which Applicant contends was late.2 We reject this
contention. Opposer’s trial period was set to close on July 24, 2016 (16 TTABVUE).
Because that date fell on a Sunday, pursuant to Trademark Rule 2.196, 37 C.F.R.
§ 2.196, Opposer’s submission of its evidence for this period is considered timely on
Monday, July 25, 2016. Applicant submitted no evidence.
The record consists of:
• The pleadings;
• Pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the
opposed Application Serial No. 86048868;
• Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), the pleaded
registrations properly made of record in Opposers’ Notice of Opposition,
1 TTABVUE 13-28;3
• Pursuant to Trademark Rule 2.120(k) (formerly 2.120(j)), 37 C.F.R. § 2.120(k),
Applicant’s discovery responses submitted under Opposers’ Notice of Reliance,
17 TTABVUE 7-20;
• Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), printouts from four
websites submitted under Opposers’ Notice of Reliance, 17 TTABVUE 30-69.

2 19 TTABVUE 4 (Applicant’s Brief).
3 Opposer also pleaded ownership of Reg. No. 2820494 in the Notice of Opposition, but the
registration has been cancelled, and Opposer does not rely on it in briefing.
Opposition No. 91215217

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II. Standing and Priority
Each opposer must prove standing by showing a real interest in the outcome of
the proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Wise F&I, LLC v.
Allstate Ins. Co., 120 USPQ2d 1103, 1107 (TTAB 2016) (“When a notice of opposition
is filed by joint opposers, each opposer must plead, and ultimately prove, that it has
a ‘real interest,’ i.e., a direct and personal stake, in the outcome of the proceeding, as
well as a ‘reasonable basis’ for its belief of damage.”) (citations omitted). Twinkle,
Inc.’s pleaded registrations showing current status and title set forth above and made
of record through the Notice of Opposition establish its standing.4 See Coach Serv. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012).
However, neither of the two other opposers owns a pleaded registration. The Notice
of Opposition alleges that they are “related affiliates” of Twinkle, Inc., and groups the
three opposers together for purposes of alleging use of the registered marks.5
However, Opposers introduced no evidence whatsoever to prove such use and
affiliation or anything relevant to either a real interest or a belief of damage by A &
T Tobacco Imports Inc. and Tobacco Marketers NA LLC. Accordingly, Opposers A &
T Tobacco Imports Inc. and Tobacco Marketers NA LLC failed to establish their
standing, and therefore the opposition is dismissed as to these two opposers. See

4 1 TTABVUE 13-28 (Notice of Opposition).
5 1 TTABVUE 6-9.
Opposition No. 91215217

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Lipton Indus. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188-89 (CCPA
1982) (“A petitioner’s allegations alone do not establish standing…. The facts
regarding standing, we hold, are part of a petitioner’s case and must be affirmatively
proved.”). This opposition therefore proceeds solely on the claims brought by opposer
Twinkle, Inc. and any reference to “Opposer” hereinafter is limited to Twinkle, Inc.
Because of Twinkle, Inc.’s pleaded registrations, Section 2(d) priority is not in
issue as to the marks and the goods covered by these registrations. See id. Applicant
does not contest priority.
III. Likelihood of Confusion
The determination under Section 2(d) involves 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) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A
likelihood of confusion analysis often focuses primarily on 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”). Opposer bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).
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We focus our analysis primarily on Opposer’s Registration No. 3441357 for the
mark DOUBLE DIAMOND for “Roll your own tobacco, cigars and filters for tobacco”
and Registration No. 4008486 for the mark DIAMOND for “Filtered cigars, small
cigars and little cigars.” If we find no likelihood of confusion as to the marks and goods
in these two registrations, then it follows there would be no likelihood of confusion
with the marks in the other pleaded registrations, which bear comparable or less
similarity to the mark in the Application. See In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2008) (confining likelihood of confusion analysis to one of
multiple cited registrations deemed closest to the applied-for mark).
A. The Goods, Trade Channels, and Classes of Consumers
Our comparison of the goods must be based on the identifications in the
Application and Opposer’s registrations. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Thus, we compare Applicant’s “Smokers’ articles, namely, hookah charcoal” to
Opposer’s “Roll your own tobacco, cigars and filters for tobacco” and “Filtered cigars,
small cigars and little cigars.”
On their faces, the identifications make clear that Applicant’s and Registrant’s
goods all relate to smoking. Opposer argues that hookah charcoal is used in a hookah
pipe to smoke tobacco, and that its identified goods are tobacco-related, thus
establishing their relatedness. A hookah is “a tobacco pipe of Near Eastern origin
with a long, flexible tube by which the smoke is drawn through a jar of water and
Opposition No. 91215217

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thus cooled.”6 A more detailed definition describes it as “[a] pipe traditionally used
for smoking flavored tobacco in which tobacco is placed in a bowl and heated with
burning charcoal, producing smoke that is drawn through an urn of water that cools
it and then into a long tube with an attached mouthpiece….”7 Thus, as elucidated by
the definitions, the wording of Applicant’s and Opposer’s identifications show the
relatedness of the goods. Also, the two online articles Opposer submitted about how
to smoke hookahs show some degree of consumer exposure to information about using
hookah charcoal and tobacco together.8 Not only do the goods at issue all involve
smoking, but also Applicant’s hookah charcoal would be used with loose tobacco,
while Opposer’s goods include roll-your-own tobacco and cigars that contain tobacco.
Thus, we find the goods related.
Turning to the trade channels and classes of consumers, we presume because of
Opposer’s unrestricted identification of goods that its products travel in all the usual
channels of trade for such goods and are available to all potential classes of ordinary
consumers. See Cunningham, 55 USPQ2d at 1846 (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”); In re Elbaum,

6 The Random House Dictionary online, dictionary.com, entry for “hookah.” We take judicial
notice of the dictionary definition. See University of Norte Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed Cir.
1983). The Board may take judicial notice of online dictionary definitions that exist in print
format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
7 The American Heritage Dictionary online, thefreedictionary.com, entry for “hookah.” We
take judicial notice of the dictionary definition.
8 17 TTABVUE 64-65 (wanderwisdom.com) and 66-69 (jrcigars.com).
Opposition No. 91215217

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211 USPQ 639, 640 (TTAB 1982). Opposer submitted website printouts from “Hookah
Hub,” offering hookah charcoal as well as loose tobacco.9 Similarly, webpages from
Hookah-Shisha.com show hookah charcoal and loose tobacco both offered for sale
through the site.10 This evidence demonstrates that goods such as Applicant’s and
Opposer’s travel in the same trade channels to the same classes of consumers.
B. Similarity of the Marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The proper
comparison inquires “not whether the marks can be distinguished when subjected to
a side-by-side comparison, but whether they are sufficiently similar in their overall
commercial impression.” Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). We remain mindful
that “marks ‘must be considered . . . in light of the fallibility of memory’ and ‘not on
the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (citation omitted).
Considered in their entireties, we find the marks similar. They share a significant
visual and phonetic resemblance because Applicant’s BLACK DIAMOND mark
features DIAMOND as the dominant term, which constitutes the entire mark in one
of Opposer’s registrations and the dominant term in the other, DOUBLE DIAMOND.

9 17 TTABVUE 30-53 (hookahhub.com).
10 Id. at 54-63 (hookah-shisha.com).
Opposition No. 91215217

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In Applicant’s mark, the first word, BLACK is an adjective describing the color of the
noun it modifies, DIAMOND, which therefore stands out as the dominant term in the
mark. Along the same lines, in Opposer’s DOUBLE DIAMOND mark, the first word
modifies and refers to doubling a DIAMOND, with DIAMOND therefore serving as
the more prominent word in the mark. Moreover, nothing about BLACK, in
Applicant’s mark, or DOUBLE, in Opposer’s mark, changes the connotation of
DIAMOND, so it remains the same in all the marks. Applicant maintains that the
commercial impression of its mark differs from Opposer’s, in that BLACK DIAMOND
is suggestive of charcoal, which “is a carbon compound, like diamond, that is less
dense than diamond and black compared to diamonds that are generally clear or at
least transparent.”11 Regardless of any suggestiveness of BLACK DIAMOND, we
disagree that it creates a significantly different commercial impression than
DIAMOND or DOUBLE DIAMOND. Applicant concedes that the suggestiveness
stems from referring to a black-colored diamond. While the commercial impression of
the marks has some variation in nuance because of the additional wording in BLACK
DIAMOND and DOUBLE DIAMOND, the overall commercial impressions of all three
marks are quite similar because they refer to essentially the same thing – diamonds.
To the extent Applicant’s mark implies the good, i.e., hookah charcoal, it simply
points to a good that is complementary and related to Opposer’s goods, which could
lead to the impression that Opposer has expanded its line of smoking-related
products.

11 15 TTABVUE 7-8 (Applicant’s Brief).
Opposition No. 91215217

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We disagree with Applicant’s unsupported contention that DOUBLE DIAMOND
gives rise to a commercial impression of “two lungs that might fill up with black
smoke from the use of Opposer’s goods.”12
While Applicant correctly argues that the marks must be considered in their
entireties, it also acknowledges that sometimes more or less weight may be accorded
a particular portion of a mark.13 For the reasons set forth above, we reject Applicant’s
contention that BLACK dominates its mark merely because the term comes first.
Overall, we deem Applicant’s mark similar in appearance, sound, connotation and
commercial impression to Opposer’s marks.
C. Number and Nature of Similar Marks in Use on Similar Goods
Under the sixth du Pont factor, we may consider “[t]he number and nature of
similar marks in use on similar goods.” du Pont, 177 USPQ at 567. Applicant argues
that the term DIAMOND should be considered weak, such that the differences
between its mark and Opposer’s marks suffice to avoid likely confusion. However, as
noted above, Applicant failed to introduce any evidence in this case, and the list of
third-party registrations relied on in its Brief, to which Opposer objects, lacks
probative value. See Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB
2012) (no consideration given to list of third-party registrations in brief where the
registrations were not of record); TBMP § 704.03(b)(1)(B) (“[A] party may not make a
third-party registration of record simply by introducing a list of third-party

12 15 TTABVUE 11 (Applicant’s Brief).
13 15 TTABUVE 6-7 (Applicant’s Brief).
Opposition No. 91215217

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registrations that includes it….”). Similarly, we find unpersuasive Applicant’s
unsupported arguments based on Opposer’s alleged consent to a third party’s BLACK
DIAMOND mark in the context of a different opposition proceeding,14 as the record
in this case lacks evidence on this point. Regardless, we would decline to infer, based
on Opposer’s consent to registration of the mark by a third party for different goods
than those at issue here, that this factor weighs against likely confusion. Instead,
based on the record, we find this factor neutral.
IV. Conclusion
We conclude that the similarity of Applicant’s BLACK DIAMOND mark to
Opposer’s DIAMOND and DOUBLE DIAMOND marks in Registration Nos. 3441357
and 4008486 and the related goods that travel in the same trade channels to the same
classes of consumers result in a likelihood of confusion. As the newcomer, Applicant
“has the duty of avoiding confusion, and is charged with the obligation of doing so.”
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993).
Decision: The opposition is sustained.

14 15 TTABVUE 15 (Applicant’s Brief).