Accelerate s.a.l.

Trademark Trial and Appeal Board

Feb 22, 2012

No. 77522433 (T.T.A.B. Feb. 22, 2012)

Mailed:
February 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Accelerate s.a.l.
________

Serial No. 77522433
_______

Thomas L. Peterson, Esq., of Brundidge & Stanger PC for
Accelerate s.a.l.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Holtzman, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Accelerate s.a.l., applicant, filed an application to
register the mark COLOMBIANO COFFEE HOUSE (in standard
character form) for services described as “providing food
and drink” in International Class 43.1 The wording “Coffee
House” has been disclaimed.
The examining attorney refused registration of the
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §

1 Application Serial No. 77522433 was filed under Section 1(b)
based on an allegation of a bona fide intent to use the mark in
commerce.
THIS OPINION IS A PRECEDENT
OF THE TTAB
Serial No. 77522433
2
1052(d), based on a likelihood of confusion with the
registered certification mark COLOMBIAN for “coffee” in
International Class A.2
Registration was also refused pursuant to Section
2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the
proposed mark COLOMBIANO COFFEE HOUSE is merely descriptive
of the recited services.
Applicant has appealed the refusals. Both applicant
and the examining attorney have filed briefs.
Of the two statutory refusals, we begin by addressing
likelihood of confusion.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).

2 Registration No. 1160492, issued on July 7, 1981 to the
Republic of Colombia. The registration provides the
“certification standards and conditions for Colombian coffee,
including soluble coffee (‘Certified Product’), authorized and
certified by the Republic of Colombia,” and goes on to specify
the type of beans, region of Colombia, and characteristics of the
coffee certified. As described in the registration, the coffee,
when processed in accordance with registrant’s methods and
standards, has the following characteristics: “mild, clean cup,
of medium/high acidity and body and full and pronounced aroma.”

Serial No. 77522433
3
As noted above, the cited registration is for a
certification mark; however, this fact has very little
effect on our determination as to whether or not there is a
likelihood of confusion.
The test for determining likelihood of confusion with
respect to certification marks is the same as that
applied to trademarks, i.e., the du Pont analysis.
However, because the certification mark owner does not
itself use the mark, the question of whether there is
a likelihood of confusion is based on a comparison of
the mark as applied to the goods or services of the
certification mark users. (citations omitted). Other
issues relating to the goods and services, including
the channels of trade and purchasers therefor, are
determined from the standpoint of the users as well.

Motion Picture Ass’n of America, Inc. v. Respect
Sportswear, Inc., 83 USPQ2d 1555, 1559 (TTAB 2007).
In any likelihood of confusion case, two key
considerations are the similarity or dissimilarity of the
goods and services at issue and the similarity or
dissimilarity of the respective marks in their entireties.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976),
We first consider the marks at issue and, in doing so,
we examine the similarities and dissimilarities of the
marks in their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Serial No. 77522433
4
With respect to applicant’s mark, we are able to
quickly discern the dominant element is the term
COLOMBIANO. It appears first and is followed by the
disclaimed and generic wording, COFFEE HOUSE. Thus, for
purposes of noting any source-identifying qualities of
applicant’s proposed mark, consumers will likely focus on
the term COLOMBIANO. In terms of appearance and sound,
COLOMBIANO is clearly very similar to the cited registered
mark, COLOMBIAN. The addition of the letter “O” in
applicant’s mark does very little to distinguish
applicant’s mark from the registered mark. Cf. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 965, 82 USPQ2d 1828, 1832
(Fed. Cir. 2007) (noting, in comparing ASPIRINA to aspirin,
that “[a]dding an ‘a’ to aspirin results in virtually no
distinction with respect to the visual impressions of the
terms.”).
The commercial impression or connotation created by
applicant’s mark is also very similar to the registered
mark due to the dominant element, COLOMBIANO, having the
same defined meaning as the registered mark. Specifically,
“Colombiano” is a direct Spanish translation of the English
term “Colombian” and, likewise, each term may be used as an
adjective describing something “of or from [the country of]
Serial No. 77522433
5
Colombia.”3 Thus, to the extent that consumers understand
the term COLOMBIANO as the Spanish equivalent of the
English term “Colombian,” the terms will be perceived as
having the same connotation, i.e., denoting something from
the country of Colombia. Palm Bay Imports, 73 USPQ2d at
1696 (“Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English to
determine genericness, descriptiveness, as well as
similarity of connotation in order to ascertain confusing
similarity with English word marks….”)(Internal citations
omitted). Even for the relevant consumers who are
unfamiliar with this direct translation, because of the
near visual and aural identity of these particular terms
consumers are likely to conclude that COLOMBIANO and
COLOMBIAN have similar meanings.
Both applicant’s use of the term COLOMBIANO and the
registered mark will be understood in the context of
coffee. Applicant’s mark must be considered in its
entirety and the term COLOMBIANO is immediately followed by
COFFEE HOUSE; likewise, the registered mark is for
certifying “coffee” from Colombia. Moreover, the record
shows that the country of Colombia is renowned for and one

3 Translation evidence attached to Office Action dated July 17,
2009.
Serial No. 77522433
6
of the world’s largest producers of coffee beans.
Accordingly, the beverage produced from these beans is
referred to as “Colombian coffee.”4 In view of the
aforementioned, the commercial impression and connotation
of the mark COLOMBIANO COFFEE HOUSE in connection with
“providing food and drink” services is that Colombian
coffee will be served; likewise, registrant’s mark connotes
that coffee bearing its certification mark derives from
Colombia.
Applicant argues that the COLOMBIANO element in its
mark has a non-geographic connotation because it is the
result of “the combination of names of two individuals from
a love story that dates back to the 1920s.”5 Brief, p. 9.
However, there is nothing in the record to suggest that
this love story is well-known or even that, if it were,
consumers of “providing food and drink” services are likely
to associate the term COLOMBIANO with it.
In sum, we conclude that the marks are overall very
similar.

4 See evidence attached to Office Action dated July 17, 2009.

5 The story, as recounted on applicant’s website, essentially
begins with a woman named “Coco” who owns a coffee house called
“Coco’s Coffee House.” She decides to her honor her grandmother
“Lomalita” by combining their names and renaming her coffee house
“Coloma’s Coffee House.” After falling in love with an Italian
gentleman “Fabiano,” she decides to once again rename the coffee
Serial No. 77522433
7
We turn now to the relatedness, if any, of applicant’s
“providing food and drink” services to the certified goods
“coffee.” The services and goods need not be identical to
find likelihood of confusion under Section 2(d) of the
Trademark Act. Rather, they need only be related in such a
way that the circumstances surrounding their marketing
would result in relevant consumers mistakenly believing
that the goods and services originate from or are
associated with the same source. See On-Line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re International Tel. & Tel. Corp., 197 USPQ
910, 911 (TTAB 1978). Furthermore, we must view the goods
and services as they are identified in the registration and
application. Paula Payne Prods. v. Johnson Publ. 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”).
Finally, we are cognizant of the “something more”
precedent set forth by our primary reviewing court and its
predecessor that is applied when determining the
relatedness of one party’s food provision services, e.g.,

house “Colombiano Coffee House” to invoke all three characters’
names.
Serial No. 77522433
8
restaurant services, and the goods of another party that
may be served or sold by restaurants. In such cases, it
has long been held that the mere fact that a restaurant may
offer certain food items or beverages does not by itself
mean that said services and goods are sufficiently related;
rather, in order “[t]o establish likelihood of confusion a
party must show something more than that similar or even
identical marks are used for food products and for
restaurant services.” Jacobs v. International Multifoods
Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982)
(emphasis added); see also In re Opus One Inc., 60 USPQ2d.
1812, 1813 (TTAB 2001) (finding restaurant services related
to wine with identical mark and “something more”); cf. In
re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed.
Cir. 2003) (requiring a showing of “something more” to find
likelihood of confusion between beer and restaurant
services).
The examining attorney argues that applicant’s
services and the coffee provided by the users of
registrant’s certification mark are sufficiently related
for purposes of likelihood of confusion because “one could
reasonably expect or anticipate that applicant will in fact
serve coffee drinks to others.” Brief, p. 5. Certainly
applicant’s broadly worded “providing food and drink” could
Serial No. 77522433
9
encompass a coffee house which is defined as a “restaurant
where coffee and other refreshments are served.”6 This is
obviously the most rational conclusion to draw given the
inclusion of COFFEE HOUSE in applicant’s mark; further,
while the application is not based on use in commerce,
applicant’s own website evidence indicates that it is in
the business of rendering coffee house services.7 In
addition, the examining attorney submitted copies of five
third-party registrations for marks covering both
restaurant or café services as well as coffee beverages.
These registrations are probative to the extent that they
suggest that the services of applicant and coffee products
are goods and services that may emanate from a common
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993).
Based on the record, we find the requisite “something
more” showing has been made and applicant’s services, as
recited, are sufficiently related to coffee. Indeed, the

6 The American Heritage Dictionary of the English Language
(Fourth Ed. 2009). Copy of definition entry submitted with
Office Action dated July 17, 2009.

7 Applicant submitted with its brief copies of printouts from its
own website (originally attached to its petition to revive the
application filed on June 25, 2009). In these materials,
applicant describes the love story involving a coffee house and
developing its company from the “business of Colombian Coffee
House...into a worldwide franchise…”

Serial No. 77522433
10
circumstances of this proceeding are similar to the
scenario anticipated by the Federal Circuit in In re Coors
Brewing Co. for finding a relationship between restaurant
services and beverages. In that decision, the Federal
Circuit reversed the Board’s decision and found that
applicant’s beer and the restaurant services in the cited
registration were not sufficiently related, but went on to
say that “[t]his case would be different...if the
registrant’s mark had been for a brewpub...In that case,
the goods and services associated with the two marks would
clearly be related and the case for a likelihood of
confusion therefore much stronger.” In re Coors Brewing
Co., 68 USPQ2d at 1064. By analogy, a coffee house is to
coffee as a brewpub is to beer, each establishment
specializing in a specific beverage but possibly offering
other drinks and food items. The emphasis of a coffee
house is on coffee beverages. Accordingly, we find that
applicant’s services and Colombian coffee are related, and
this du Pont factor favors a finding of likelihood of
confusion.
As to the channels of trade and classes of purchasers,
we note that neither applicant’s “providing of food and
drink” services nor the “coffee” identified in the cited
registration and provided by the users of registrant’s
Serial No. 77522433
11
certification mark are limited to any particular trade
channels or classes of purchasers. We must therefore deem
that applicant’s services and the coffee will be offered in
all appropriate channels and to all the usual purchasers
for such goods and services. See In re Davis-Cleaver
Produce Co., 197 USPQ 248 (TTAB 1977). Because of the
nature of the identified goods and services, this would
mean that both are offered to the general public, and that
the coffee certified by registrant could be served and sold
directly by applicant’s coffee house. For these reasons,
the du Pont factors involving channels of trade and classes
of purchasers favor a finding of likelihood of confusion.
Upon consideration of all the du Pont factors on which
there is evidence or argument, we find that applicant's use
of the mark COLOMBIANO COFFEE HOUSE for “providing of food
and drink” is likely to cause confusion with the registered
certification mark COLOMBIAN for coffee. Purchasers
familiar with registrant’s certification mark COLOMBIAN for
coffee, upon encountering applicant’s coffee house services
offered under the very similar mark COLOMBIANO COFFEE
HOUSE, are likely to believe that registrant is authorizing
applicant’s use of the mark, and assume that applicant’s
services are therefore licensed by or in some way
associated with registrant.
Serial No. 77522433
12
Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant's goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration is sought, the
context in which it is being used on or in connection with
those goods or services, and the possible significance that
the term would have to the average purchaser of the goods
or services because of the manner of its use; that a term
may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is settled that “[t]he question is not whether
Serial No. 77522433
13
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002); see also In
re Home Builders Ass’n, 18 USPQ2d 1313 (TTAB 1990); and In
re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
The examining attorney argues that COLOMBIANO COFFEE
HOUSE is descriptive of the recited services because “it
describes the fact that applicant intends to provide food
and drink that can and/or will offer drinks or other foods
that will have as their origin the country of Colombia
(Colombiano).” Brief, p. 9. In support, the examining
attorney references the translation evidence showing that
“Colombiano” is the Spanish equivalent of the English word
“Colombian” and the dictionary definition of the term
“coffee house.” Ultimately, he concludes that applicant’s
proposed mark “when viewed and analyzed as to the services
identified in the application serves to describe the very
character of applicant’s establishment and the source or
origin of the coffee drinks it will serve to others.” Id.,
p. 10.
Applicant, in its brief, misconstrues the
descriptiveness refusal and incorrectly addresses it as a
Serial No. 77522433
14
“merely geographically descriptive” issue. Brief, p. 8.
Applicant cites to the TMEP, sets forth a test, and argues
accordingly as if the examining attorney has refused
registration based on the mark being primarily
geographically descriptive of the recited services. To be
clear, the “merely descriptive” and “primarily
geographically descriptive” refusals are two distinct
possible grounds for refusing registration of a mark and
are based on different subsections of the Trademark Act.
As described above, the “merely descriptive” (or
“descriptiveness”) refusal is based on Section 2(e)(1) of
the Act and involves a mark that merely describes a key
feature, ingredient or quality of the application’s recited
goods or services. The “primarily geographically
descriptive” refusal, on the other hand, is based on
Section 2(e)(2) of the Act and involves a mark that
describes the geographic origin of the actual goods or
services recited in the application. See TMEP Section 1210
and cases cited therein. The examining attorney could have
conceivably raised this latter ground as an additional or
alternative bar to registration; likewise, a refusal under
Section 2(e)(3) based on the mark being geographically
deceptively misdescriptive of the services would also be
Serial No. 77522433
15
plausible.8 See, e.g., In re Consolidated Specialty
Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004) (COLORADO
STEAKHOUSE and design held geographically deceptively
misdescriptive of restaurant services when the steaks being
served do not originate from the state of Colorado).
Refusals based on these grounds are not necessarily
mutually exclusive and the same mark may be found to be
merely descriptive (or deceptively misdescriptive) as well
as primarily geographically descriptive (or geographically
deceptively misdescriptive) of the identified goods or
services. See Grand Canyon West Ranch, LLC v. Hualapai
Tribe, 88 USPQ2d 1501 (2008).
In any event, we find no ambiguity regarding the
second ground for refusal before the Board in this ex parte
appeal. A review of the prosecution of the application
reveals the examining attorney clearly and consistently
refused registration of applicant’s proposed mark under
Section 2(e)(1) and, in doing so, has not asserted that the
mark describes the geographic origin of applicant’s recited
services. Rather, the examining attorney argues that
COLOMBIANO COFFEE HOUSE immediately describes the nature

8 We make no comment on whether a refusal based on any additional
grounds would be met with affirmance. Rather, we only address
the ground for refusal before us and note that it is an examining
attorney’s prerogative to assert any ground(s) for refusal which
he or she believes is appropriate.
Serial No. 77522433
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and a key feature of applicant’s services, i.e., applicant
will render “coffee house” services and “Colombian” coffee
will be served there.
Regardless of any possible confusion on applicant’s
part concerning the actual ground for refusal, the burden
of proof remains with the examining attorney to establish
that the mark is merely descriptive of the recited
services. Here, we find the examining attorney has met his
burden and agree that, in view of the evidence of record,
COLOMBIANO COFFEE HOUSE is merely descriptive of the
“providing of food and drink” services.
The previously-discussed dictionary definition of
record establishes the disclaimed wording COFFEE HOUSE is a
generic term for a specific type of restaurant, namely, one
that specializes in serving coffee-based drinks. The
application’s recitation of services encompasses coffee
house services.
As to the significance of the term COLOMBIANO, we
reference our discussion above in the context of the
similarity of the marks, particularly our finding as to the
connotation and commercial impression created by
applicant’s mark. Specifically, we rely on the translation
evidence showing that COLOMBIANO is the Spanish equivalent
of the English word “Colombian,” an adjective used to
Serial No. 77522433
17
describe something that comes from the country of Colombia;
and the evidence establishing that Colombia is renowned for
its coffee beans and coffee made from said beans may be
referred to as “Colombian” or “Colombian Coffee.” The
certification mark registration cited as the basis for the
examining attorney’s likelihood of confusion refusal also
underscores the importance of the terminology and the
actual fact that coffee from Colombia is referred to as
“Colombian.” As described in the registration and
corroborated by internet evidence submitted by the
examining attorney, Colombian coffee is regarded as
possessing certain distinctive qualities and
characteristics due to factors associated with that region,
including its flavor, aroma and body. Based on the
aforementioned evidence, we find that consumers
encountering applicant’s mark in connection with the
recited services will immediately understand the term
COLOMBIANO as describing a particular type of coffee that
will be served in the coffee house, that is, coffee having
certain qualities and characteristics that are associated
with authentic Colombian coffee. Ultimately, the entire
mark describes the nature and key features of applicant’s
recited services.
Serial No. 77522433
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Applicant once again relies on the love story
mentioned on its website to argue that COLOMBIANO is not
descriptive of its services because it “is not [a]
geographic location, but rather the combination of two
people’s names...” Brief, p. 9. However, for the same
reason this argument was unavailing in the likelihood of
confusion context, it also has little relevance in
overcoming the descriptiveness refusal. That is, there is
no evidence to suggest that the average consumer, or anyone
other than those reading applicant’s website, are familiar
with this love story and are likely to associate the term
COLOMBIANO therewith.
In sum, we find that the evidence supports the
examining attorney’s refusal to register applicant’s mark
on the basis that it is merely descriptive of the recited
services.
Decision: The examining attorney's refusals to
register under Sections 2(d) and 2(e)(1) are affirmed.