Arabica Funding, Inc.v.Ryan Bros. Coffee, Inc.

Trademark Trial and Appeal Board

Feb 19, 2004

No. 91150426 (T.T.A.B. Feb. 19, 2004)

Mailed: February 19, 2004
Hearing: Paper No. 25
November 20, 2003 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Arabica Funding, Inc.
v.
Ryan Bros. Coffee, Inc.
_____
Opposition Nos. 91150409; 91150575; and 91150426
to application Serial Nos. 76216469; 76216470; and 76216471
filed on February 23, 2001
_____
Travis L. Buchman, Peter Lancaster, and Elizabeth C.
Buckingham of Dorsey & Whitney LLP for Arabica Funding, Inc.
James E. Schneider L.L.M., of Law Office of James E.
Schneider L.L.M. for Ryan Bros. Coffee, Inc.
______
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Ryan Bros. Coffee, Inc. has filed applications to
register the mark LIFE IS TOO SHORT TO BE BITTER for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91150409; 91150575; 91150426
2
“coffee;”1 “coffee mugs and coffee cups;”2 and “clothing,
namely, shirts, hats, jackets, and sweatshirts.”3
Registration has been opposed by Arabica Funding, Inc.
on the grounds that it or its predecessor has used the mark
“LIFE IS SHORT. STAY AWAKE FOR IT.” in connection with
restaurant services and retail store services in the field
of coffee, t-shirts, and beverageware since at least as
early as February 23, 2001, the filing date of applicant’s
applications; that opposer is the owner of two registrations
for the mark “LIFE IS SHORT. STAY AWAKE FOR IT.”, namely,
Registration No. 2,008,379 (issued October 15, 1996; Section
8 affidavit accepted, Section 15 affidavit acknowledged) for
“restaurant services and retail store services in the field
of coffee;” and Registration No. 2,000,062 (issued September
10, 1996; Section 8 affidavit accepted, Section 15 affidavit
acknowleged) for “t-shirts;” and that applicant’s mark, if
used on the identified goods, would so resemble opposer’s
previously used and registered mark, as to be likely to
cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
1 Serial No. 76216469, filed February 23, 2001, and based on a
bona fide intention to use the mark in commerce.
2 Serial No. 76216470, filed February 23, 2001, and based on a
bona fide intention to use the mark in commerce
3 Serial No. 76216471, filed February 23, 2001, and based on a
bona fide intention to use the mark in commerce.
Opposition No. 91150409; 91150575; 91150426
3
Preliminarily, we note that opposer has objected to
Exhibit 2 to applicant’s notice of reliance, which consists
of a printout of the results of a search of the Internet for
“life is short.” Opposer has objected to this exhibit on
the ground that an Internet printout does not qualify as a
printed publication under Trademark Rule 2.122(e).
Applicant does not dispute opposer’s contention and, in any
event, opposer’s objection is well taken. See Raccioppi v.
Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Thus, we
have not considered the printout in reaching our decision
herein.
The record consists of the pleadings, the files of the
opposed applications; trial testimony with related exhibits
taken by both parties; and applicant’s notice of reliance on
a list of third-party registrations and applications for
marks which include the phrase “LIFE IS (TOO) SHORT”; copies
of several third-party registrations for marks which include
the phrase; and opposer’s responses to applicant’s
interrogatories.
Both parties filed briefs on the case and both were
represented by counsel at an oral hearing held before the
Board.
The record shows that opposer licenses use of the mark
“LIFE IS SHORT. STAY AWAKE FOR IT.” to Caribou Coffee
Company (Caribou). Caribou was the original owner of the
Opposition No. 91150409; 91150575; 91150426
4
pleaded registrations and assigned the mark to opposer on
April 20, 2001. Caribou began as a “mom and pop” coffee
store in Edina, Minnesota in December 1992. It quickly
expanded to twelve retail stores in Minnesota and in
September 1994 opened its first store in Atlanta, Georgia.
It was then that Caribou began use of the slogan “LIFE IS
SHORT. STAY AWAKE FOR IT.” in connection with its restaurant
services and retail store services in the field of coffee.
According to opposer’s witness Kimberly Puckett, the slogan
was adopted “to communicate to [Caribou’s] customers the
differences between [it and Starbucks”]. (Puckett dep., p.
17). The mark was first used on posters and in newspaper
advertisements in connection with Caribou’s services. The
mark has since come to be used on t-shirts (1994); mugs
(1994); thermoses (1997); and pre-packed coffee (1995). The
mark is currently used on virtually all of Caribou’s
advertising and promotional materials.
Caribou is the second largest company-owned coffee
retailer in the United States, and it has approximately 150
retail stores in seven states and the District of Columbia.
Caribou also sells its coffee through commercial channels to
office coffee services, restaurants, hotels and grocery
stores. Caribou’s yearly sales and advertising figures were
filed under seal, but as opposer notes in its brief, for the
period 1994-2002, Caribou’s total sales were over $450
Opposition No. 91150409; 91150575; 91150426
5
million and Caribou spent over $10 million advertising and
marketing products in connection with which the mark “LIFE
IS SHORT. STAY AWAKE FOR IT.” was used.
Applicant, Ryan Bros. Coffee, Inc. began business in
1994 with a single coffee cart in downtown San Diego,
Calfornia and subsequently expanded to a retail store.
Applicant ceased its retail operations in 2000 and is
currently a “microroaster” and wholesaler of specialty
coffee beans and teas to hotels, restaurants, cafes and
delis.
Applicant is a family-owned and managed business.
According to one of the owners, Harry Ryan, applicant
adopted the slogan “LIFE IS TOO SHORT TO BE BITTER” in 1999
as the result of a family argument and because applicant
wanted to convey to customers that its coffee is smooth
instead of bitter. Applicant began use of the mark in 1999
and currently uses “LIFE IS TOO SHORT TO BE BITTER” on
coffee cups, mugs, t-shirts, and other clothing for
promotional purposes only, and not for resale. Applicant
markets its coffee and tea products by “cold calling” and
“word of mouth.” Applicant maintains a website for
informational purposes only; the website contains
descriptions of applicant’s coffee and teas, but customers
may not order products online.
Opposition No. 91150409; 91150575; 91150426
6
Opposer, through the testimony of its witness, has
introduced as exhibits copies of its pleaded registrations
for the mark “LIFE IS SHORT. STAY AWAKE FOR IT.” which show
that each of the registrations is subsisting and owned by
opposer. Thus, there is no issue with respect to opposer’s
priority vis-à-vis the goods and services identified in
opposer’s registrations. King’s Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, (CCPA
1974). Moreover, the uncontroverted testimony of opposer’s
witnesses demonstrates that opposer has prior common law
rights in its mark for pre-packed coffee and beverageware,
i.e., mugs and thermoses, by virtue of use prior to
applicant’s first use in 1999. In any event, applicant does
not dispute opposer’s priority. (Applicant’s brief, p.6).
We turn our attention then to the issue of likelihood
of confusion.4 Our determination of likelihood of confusion
under Section 2(d) must be based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In re
E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 56
(CCPA 1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
4 Although opposer did not plead a likelihood of confusion vis-à-
vis its pre-packed coffee and the goods identified in applicant’s
Opposition No. 91150409; 91150575; 91150426
7
application, we deem the notice of opposition amended to include
such a claim. Fed. R. Civ. P. 15(b).
Opposition No. 91150409; 91150575; 91150426
8
differences in the essential characteristics of the goods
and the differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Upon consideration of the relevant duPont factors, it
is our view that confusion as to source or sponsorship is
not likely to occur. We acknowledge, in this regard, that
while many factors favor opposer and, thus, a finding of
likelihood of confusion, such factors are simply outweighed
by the significant differences in the respective marks,
which are readily distinguishable when considered in their
entireties.
In the present case, there is no question that the
goods identified in applicant’s application are identical
and otherwise closely related to the goods and services
identified in opposer’s registrations and the goods for
which opposer has established prior common law rights in its
trademark. Specifically, applicant’s coffee mugs and coffee
cups are identical in part and otherwise closely related to
opposer’s mugs and thermoses; applicant’s clothing items are
identical in part and otherwise closely related to opposer’s
t-shirts. Further, applicant’s coffee is identical in part
and otherwise closely related to opposer’s pre-packed
coffee, restaurant services and retail store services in the
field of coffee. In the latter regard, it has been
Opposition No. 91150409; 91150575; 91150426
9
frequently held that likelihood of confusion may arise from
the use by different parties of the same or similar marks
for goods, on the one hand, and in connection with services
which deal with those goods, on the other.
Further, although it appears that applicant limits the
sale of its coffee to wholesalers and that its coffee cups,
coffee mugs and clothing are used for promotional purposes
only, there are no limitations in applicant’s applications
with respect to channels of trade or purchasers. Thus, for
purposes of our likelihood of confusion analysis, we must
presume that applicant’s goods are sold in all the normal
channels of trade to all the usual purchasers for the goods
of the type identified. See Canadian Imperial Bank v. Wells
Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). In
other words, we can draw no distinction between the channels
of trade and class of purchasers of the parties’ respective
goods and services.
We turn then to a determination of what we find to be
the key likelihood of confusion factor in this case, i.e.,
whether applicant’s mark and opposer’s mark, when compared
in their entireties in terms of appearance, sound, and
connotation, are similar or dissimilar in their overall
commercial impression. Comparing the marks first in terms
of their respective connotations or meanings, we recognize
that they both began with the generally known catch phrase
Opposition No. 91150409; 91150575; 91150426
10
or slogan “LIFE IS (TOO) SHORT.”5 However, we find that
this phrase is not a dominant feature of either of the
parties’ marks and that the mere presence of the phrase in
both marks is insufficient, without more, to warrant a
finding that the marks are confusingly similar in their
entireties.
As for the rest of the respective marks, opposer argues
that the “STAY AWAKE FOR IT.” portion of its mark refers to
the fact that the caffeine in coffee keeps one awake and
alert, and that the TO BE BITTER portion of applicant’s mark
refers to coffee which is smooth rather than bitter.
Opposer argues, therefore, that both marks, when viewed in
their entireties, have the same meaning, namely, “LIFE IS
(TOO) SHORT plus a desirable quality of coffee.” (Brief, p.
16).
We are not persuaded that the marks have the same
connotation, as opposer contends. As acknowledged by
opposer, the “STAY AWAKE FOR IT.” portion of its mark has a
specific and readily-recognized meaning as used in
connection with its goods and services; “STAY AWAKE FOR IT.”
connotes that drinking coffee keeps one awake and alert.
5 We judicially notice that A Dictionary of Catch Phrases (1992)
contains the following listing:
life is too short. “It [whatever “it” is] may be
doable, but the results won’t be worth the effort:
US: from 1960 or earlier” (R.C. 1978).
Opposition No. 91150409; 91150575; 91150426
11
The “TO BE BITTER” portion of applicant’s mark, apart from
being a double entendre, also has a specific and readily-
recognizable meaning as used in connection with applicant’s
goods; it connotes the bitter taste of some coffee. This is
a negative quality, not a desirable quality of coffee, as
opposer contends. Purchasers encountering the respective
marks in connection with the parties’ goods and services
will ascribe these specific meanings to “STAY AWAKE FOR IT.”
and “TO BE BITTER,” rather than “a desirable quality of
coffee” as opposer contends. Because the “STAY AWAKE FOR
IT.” portion of opposer’s mark and the “TO BE BITTER”
portion of applicant’s mark have such different
connotations, they will not be brought together in meaning
by virtue of being combined with LIFE IS (TOO) SHORT.
Moreover, even the phrases “LIFE IS SHORT” and “LIFE IS TOO
SHORT.” have different meanings. The first simply connotes
the briefness of life, whereas the latter connotes that life
is too short to either do or not do something. In sum, we
find that when the respective marks are compared in their
entireties, they have vastly different connotations.
We also find that the marks are more dissimilar than
similar when compared in their entireties in terms of
appearance and sound. Opposer’s mark consists of two
separate phrases set off by periods, and begins with the
phrase LIFE IS SHORT. Applicant’s mark, on the other hand,
Opposition No. 91150409; 91150575; 91150426
12
is a single phrase, and begins with LIFE IS TOO SHORT. In
addition, because of the differences in appearance and sound
of “STAY AWAKE FOR IT.” and “TO BE BITTER”, the marks, when
considered in their entireties, are distinguishable in
appearance and sound.
Although opposer argues that its “LIFE IS SHORT. STAY
AWAKE FOR IT.” mark is strong and well known, we find that
the evidence falls short of establishing the fame of
opposer’s mark. There is no evidence regarding the extent
of consumer recognition of “LIFE IS SHORT. STAY AWAKE FOR
IT.” with opposer’s goods and services, and we are not
convinced, based on opposer’s advertising and sales figures
alone, that the mark has achieved the status of a famous
mark. Compare: Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1991).
Several other matters require comment although they did
not affect our decision herein.
The first matter relates to the list of third-party
registrations/applications and copies of third-party
registrations for LIFE IS (TOO) SHORT marks made of record
by applicant. Applicant maintains that this evidence
demonstrates that opposer’s mark is weak. Apart from the
fact that a mere listing of third-party registrations and
applications is not the proper way to make such
registrations and applications of record, we note that
Opposition No. 91150409; 91150575; 91150426
13
third-party registrations are not evidence that the marks
shown therein are in use (and third-party applications are
evidence only of the fact they have been filed). Moreover,
only three of the registrations cover goods/services of a
type involved herein and these three registrations are owned
by the same entity. Thus, the third-party registrations and
applications are of limited probative value.
Finally, applicant’s argument that there is no
likelihood of confusion because each party displays its
involved mark along with its respective house mark is
without merit. We cannot consider the parties’ house marks
as elements that could help distinguish applicant’s mark
from opposer’s mark because the house marks are not part of
opposer’s pleaded mark or part of the mark in the involved
applications. Vornado, Inc. v. Breuer Electric Mfg. Co.,
390 F.2d 724, 156 USPQ 340, 342 (CCPA 1968).
In sum, after careful consideration of the evidence of
record with respect to the relevant duPont factors and the
parties’ arguments with respect thereto, we conclude that
there is no likelihood of confusion in this case,
That is, notwithstanding the fact that the parties are
using their respective marks on identical and otherwise
closely related goods and services which may be marketed in
the same channels of trade to the same purchasers, we find
that the marks are too dissimilar, especially in terms of
Opposition No. 91150409; 91150575; 91150426
14
their meanings and overall commercial impressions, to
support a determination that confusion is likely. See e.g.,
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991).
Decision: The opposition is dismissed.