Caffe D’Amore, Inc.

Trademark Trial and Appeal Board

Sep 30, 2004

No. 78161902 (T.T.A.B. Sep. 30, 2004)

Mailed: September 30, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Caffe D'Amore, Inc.
Serial No. 78161902
_______
Vincent G. Gioia of Christie, Parker & Hale, LLP for Caffe
D'Amore, Inc.
John Dwyer, Trademark Examining Attorney, Law Office 116 (Meryl
Hershkowitz, Managing Attorney).
_______
Before Seeherman, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Caffe D'Amore, Inc. to
register the mark ESPRESSIMO for the following goods, as amended:1
"blended powder mix used in the preparation of cappuccino and
cappuccino drinks" in Class 30; and "blended powder mix used in
the preparation of cappuccino-flavored soft drinks" in Class 32.
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, when applied to applicant's

1 Application Serial No. 78161902; filed September 9, 2002, based on an
assertion of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78161902
2
goods, so resembles the registered mark ESPRESSIMO for "electric
espresso maker and parts therefor, for domestic and commercial
use" as to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
In this case, applicant's and registrant's marks, ESPRESSIMO,
are identical. When marks are identical it is only necessary that
there be a viable relationship between the goods in order to
support a holding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
With that in mind, we turn to a consideration of the goods.
The examining attorney contends that espresso machines used
to make cappuccino and powdered mixes used to make cappuccino

2 Registration No. 1870466; issued December 27, 1994. Affidavits under
Sections 8 and 15 accepted and filed, respectively.
Ser No. 78161902
3
drinks are related in that both products are used to make the same
type of drinks. The examining attorney has introduced excerpts of
Nexis articles, website printouts and an Internet search summary
which, according to the examining attorney, show that cappuccino
is a particular type of coffee drink made from coffee beans and
that espresso machines and cappuccino drinks are related products.
The examining attorney has also submitted third-party
registrations which he claims illustrate that the respective
products may emanate from the same source and that they are "sold
through the same retailers and wholesalers." Brief, p. 10.
Applicant, on the other hand, argues that espresso machines
and blended powder mixes are neither similar, competitive nor
complementary products. Applicant contends that, unlike truly
complementary products such as the espresso makers and the
espresso beans shown in the examining attorney's third-party
registrations, drinks made from applicant's blended powder mixes
are produced by simply combining the mix with water, and
registrant's machines cannot be used to process applicant's
blended powder mixes or to produce drinks made from those mixes.
In fact, according to applicant, "registrant would be perceived as
being unlikely to sponsor or provide...a blended powder mix
because it eliminates the need for Registrant's espresso machine."
Reply Brief, p. 4.
Ser No. 78161902
4
Applicant further contends that the goods travel through
different channels of trade and are sold to purchasers having
different levels of sophistication. Applicant maintains that
registrant's espresso makers are sold to commercial establishments
and that the respective products are vastly different in price.
In this regard, applicant points to registrant's product brochure
showing that registrant's espresso machines cost between $1,745 to
$2,570 and applicant contrasts the high cost of those products
with the $5 to $10 price range of its own products.
It is true that registrant's espresso maker and applicant's
powdered mixes for making cappuccino drinks are distinctly
different products. However, the question is not whether
purchasers can differentiate the goods themselves but rather
whether purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d
1618 (TTAB 1989). Thus, it is not necessary that the goods of the
applicant and registrant be similar or even competitive to support
a finding of likelihood of confusion. It is sufficient if the
respective goods are related in some manner and/or that the
conditions surrounding their marketing are such that they would be
encountered by the same persons under circumstances that could,
because of the similarity of the marks used thereon, give rise to
the mistaken belief that they emanate from or are associated with
Ser No. 78161902
5
the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Notwithstanding applicant’s arguments, we find that there is
at least a viable relationship between these goods. Registrant's
espresso machine is used to make cappuccino, a particular type of
coffee made with espresso. Applicant's blended powdered mix can
be used, according to the identification of goods, "in the
preparation of" cappuccino. Based on the identification of goods,
it is not unreasonable to assume that a basic ingredient of the
identified powdered mix is espresso and that powdered espresso mix
can be used in an espresso machine. Thus, the products, as
identified, are complementary in that an espresso maker and
blended powdered espresso mix can be used together to produce a
cappuccino beverage.
Although applicant insists that its particular blended
powdered mix cannot be used in an espresso machine, the likelihood
of confusion must be determined based on the identification of
goods set forth in the application, and applicant's goods, as
identified, are not limited to any particular manner of use. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993). We see no reason why the goods, as identified, would not
encompass a powdered coffee product that is put in a coffee maker
to prepare cappuccino and cappuccino drinks.
Ser No. 78161902
6
To the extent that applicant is asserting that it is not
possible for this type of product to be used with an espresso
maker, there is nothing in the inherent nature of the goods or in
the record to support this contention. Moreover, we note that one
third-party registration submitted by the examining attorney
(Registration No. 2201559) expressly covers "powders" that come in
a packet "from which coffee... may be created by subjecting the
packets to hot water under pressure," e.g., by using an espresso
machine.
Registrant's identification of goods also specifically states
that its machines are for domestic as well as commercial use.
Thus, applicant's argument that the goods travel in different
channels of trade because registrant's goods are sold to
commercial establishments must fail. As for applicant's argument
regarding the differences in price of the products, applicant has
only provided evidence of the cost of registrant's commercial
espresso machines. There is no evidence that home models of
espresso makers would be as expensive as commercial models. In
fact, a Nexis excerpt from The Patriot Ledger (February 6, 2003)
suggests that espresso makers for consumer use are very
affordable, ranging in price from $29.99 to $99.99. In any event,
while the higher cost of an espresso maker may affect the care a
consumer may exercise in selecting one, the price difference
between an espresso maker and a powdered cappuccino mix would not
Ser No. 78161902
7
necessarily affect a consumer's perception that the two products
are related.
We also note that several marks have been registered for
retail stores or other retail outlets that sell both espresso
makers and coffee products. However, it is not particularly
significant whether or not applicant’s and registrant’s products
may typically be purchased through the same outlets since the two
products may not even be purchased at the same time. Consumers
who had previously purchased registrant’s ESPRESSIMO espresso
machine and used it to make cappuccino, upon encountering
applicant’s powdered mixes, the basic ingredient of which is
espresso (or which they assume is espresso), under the identical
ESPRESSIMO mark, regardless of where they find it, are likely to
believe, because of the products' complementary nature, that they
come from or are sponsored by the same company.
Furthermore, applicant's goods are inexpensive items that are
likely to be purchased on impulse, and consumers who are familiar
with the registrant's espresso makers, upon seeing applicant's
powdered mixes sold under the same mark, are unlikely to give the
matter great deliberation, but will simply assume that they
emanate from the same source.
While the mark ESPRESSIMO may be suggestive of registrant's
goods, and therefore not entitled to a broad scope of protection,
the mark is at least entitled to protection from registration of
Ser No. 78161902
8
the identical mark for related goods. See In re Colonial Stores,
Inc., 216 USPQ 793 (TTAB 1992). See also King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak
marks as between strong marks).
In view of the foregoing, and because the identical marks
ESPRESSIMO are used in connection with at least viably related
goods, we find that there is a likelihood of confusion.
To the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.