Cala d’Or Brands, Inc.

Trademark Trial and Appeal Board

Nov 21, 2019

87675583 (T.T.A.B. Nov. 21, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cala d’Or Brands, Inc.
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Serial No. 87675583
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Clay McGurk of the Law Office of Clay McGurk,
for Cala d’Or Brands, Inc.
Patrick Carr, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Taylor, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Cala d’Or Brands, Inc. (“Applicant”) seeks registration on the Principal Register
of the standard character mark BARTENDER IN A BOX for “Non-alcoholic beverages
containing fruit juices; Non-alcoholic cocktail bases; Non-alcoholic cocktail mixes;
Non-alcoholic fruit juice beverages” in International Class 32.1

1 Application Serial No. 87675583 was filed on November 7, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark
anywhere and in commerce since July 15, 2006.
Serial No. 87675583
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark in Registration No. 4203489, BARTENDER IN
A BOTTLE (in standard characters), for “non-alcoholic cocktail mixes” in
International Class 32.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Both Applicant and the Examining Attorney filed briefs.3
We affirm the refusal to register.
I. Applicable Law
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). 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. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

2 Registered September 4, 2012; Sections 8 and 15 declarations accepted and acknowledged.
3 Applicant submitted with its appeal brief evidence duplicative of some that was submitted
during prosecution. Re-submitting materials which were previously submitted is
unnecessary. In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice of
attaching to appeal brief copies of the same exhibits submitted with responses is
discouraged); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008)
(attaching as exhibits to brief material already of record requires Board to determine whether
attachments had been properly made of record and adds to the bulk of the file); In re Thor
Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs
is duplicative and is unnecessary).

Serial No. 87675583
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2003). We must consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019).
“[E]ach case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973) (internal citations removed). In any likelihood of confusion analysis, two key
considerations are 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 (CCPA 1976). We discuss below these and other factors for which there is
evidence and argument.
II. The Goods/Channels of Trade/Classes of Purchasers
We first turn to a comparison of the goods under the second DuPont factor. In
making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registration. See In re
Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018).
Applicant’s goods are identified as “non-alcoholic beverages containing fruit juices;
non-alcoholic cocktail bases; non-alcoholic cocktail mixes; non-alcoholic fruit juice
beverages” and Registrant’s goods are identified as “non-alcoholic cocktail mixes.”
The goods are in part identical in that they both include non-alcoholic cocktail mixes.
In addition, during prosecution Applicant conceded that its non-alcoholic cocktail
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bases are related to the non-alcoholic cocktail mixes in the cited registration.4
Applicant’s argument that the remaining goods identified in its application, i.e., non-
alcoholic beverages containing fruit juices and non-alcoholic fruit juice beverages, are
unrelated to the goods in the registration is unavailing. Given the in-part identical
“non-alcoholic cocktail mixes,” we need not consider the relatedness of all of
Applicant’s goods because it is sufficient for a finding of likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.5 Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007).
Furthermore, because the goods are identical in-part, the channels of trade and
classes of purchasers for such goods are considered to be the same. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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). See
also In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968);
Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101

4 Applicant’s May 18, 2018 Response; TSDR 9. The TSDR citations are to the downloadable
.pdf format.
5 We accordingly need not, and have not, considered the Examining Attorney’s evidence
purportedly showing the relatedness of the goods.
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USPQ2d 1022, 1028 (TTAB 2011). As such the channels of trade and classes of
purchasers at a minimum overlap.
The DuPont factors of the relatedness of the goods, channels of trade and classes
of purchasers strongly favor a finding of likelihood of confusion.
III. The Marks
We now turn to the first DuPont likelihood of confusion factor concerning the
similarity or dissimilarity of the marks, keeping in mind that where, as here, the
goods are in-part identical, the degree of similarity between the marks necessary to
find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
In making our determination, we consider the marks in their entireties in terms
of sound, appearance, meaning and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “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., 101 USPQ2d at 1721 (citation
omitted); see also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison
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Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207
USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). Here, the average customer includes members of the general public
seeking non-alcoholic cocktail mixes.
We compare Applicant’s mark BARTENDER IN A BOX with the cited mark
BARTENDER IN A BOTTLE and find them similar in appearance and sound in that
they are both four-word slogans that the begin with the phrase “BARTENDER IN A.”
Each mark ends with a word beginning with the letter “B” creating further
alliterative similarity. The only difference between the two marks are the last words,
BOX vs. BOTTLE, which, as discussed below, have similar connotations. We further
find that it is the common portion of the marks which is the most notable, given its
location as the first part of each mark and, thus, the first words to appear on any
label or to be articulated when pronouncing the marks. See Presto Prods. Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered”); see also Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692 (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 v. Century
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Life, 23 USPQ2d at 1700 (upon encountering the marks, consumers must first notice
the identical lead word).
We are simply unpersuaded that the marks have different connotations and
commercial impressions because of the single word difference between them. While
the final words of the marks clearly are different, they each convey a very similar, if
not the same meaning, i.e., that of a container. The record includes the definitions of
box and bottle; “box” is defined, in relevant part, as “a rigid typically rectangular
container…”6 and “bottle” is defined, in pertinent part, as “a rigid or semirigid
container typically of glass or plastic having a … narrow neck… .”7 That a box and a
bottle are containers that typically have different shapes does not alter significantly
the “container” meaning imparted by each term in the context of the two marks. We
accordingly find that both the BARTENDER IN A BOX and BARTENDER IN A
BOTTLE marks convey the same meaning in relation to the respective goods, namely
non-alcoholic mixers in a container that replace the services of a bartender. Moreover,
given the very similar meanings, coupled with the identical syntax of the marks, it is
highly likely that purchasers may well believe that the two marks are simply variants
of one another, used by a single producer to identify and distinguish companion lines
of products.
In sum, in comparing the two marks in their entireties, we have taken in account
the differences in appearance and sound between them, but find them more similar

6 February 24, 2018 Office Action; TSDR 12.
7 Id. at TSDR 26.
Serial No. 87675583
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than dissimilar in appearance and sound and very similar in connotation and
commercial impression.
The factor of the similarity of the marks thus strongly favors a finding of likelihood
of confusion.
IV. Actual Confusion/Length of Time of Concurrent Use
Applicant argues there have been no reports to Applicant of actual confusion
between the marks from either Registrant or consumers for at least eight (8) years of
concurrent use in commerce by the two marks. However, there is no evidence of record
relating to the extent of use of Applicant’s or Registrant’s marks and, thus, whether
there have been meaningful opportunities for actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000). Moreover, “uncorroborated statements of no known instances
of actual confusion are of little evidentiary value.” Majestic Distilling, 65 USPQ2d at
1205. See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that self-serving testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion). See also In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-17 (TTAB 1984) (a claim of no “actual confusion as a
result of the contemporaneous use of the marks of applicant and registrant is of little
probative value in an ex parte proceeding where we have no evidence pertaining to
the nature and extent of the use by applicant and registrant” and “the registrant has
no chance to be heard from . . . .”). Accordingly, the DuPont factors of the nature and
Serial No. 87675583
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extent of any actual confusion, and the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion are
considered neutral.
V. “Any Other Established Facts Probative of the Effect of Use”
Last, under the “catchall” 13th DuPont factor, Applicant points to Registrant’s
Section 8 specimen8 as well as webpage printouts showing Registrant’s mark as used
on its goods,9 and argues that the less prominent placement of Registrant’s mark on
its goods and the fact that the mark is a slogan, combined with Registrant’s lack of
use of the registration symbol, results in consumers being unaware that the
registered mark is a “brand name.” Put another way, Applicant’s argues that
consumers would be unaware that the cited mark is a trademark. We find this
argument unavailing for the following reasons.
First, we do not consider how marks are used in the marketplace, and must
compare the marks as they appear in the drawing of the application and in the cited
registration. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018)
(citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed.
Cir. 2017)). Second, Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in connection with the goods

8 May 18, 2018 Response; TSDR 27.
9 Id. at TSDR 16-20 and 22-23.
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identified in the certificate. Use of the registration symbol is not required to be
afforded these presumptions. During an ex parte appeal, an applicant will not be
heard on matters that constitute a collateral attack on the cited registration. In re
Dixie Rests., Inc., 105 F.3d 1405 , 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re
Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992).
To the extent that Applicant is arguing that the Board should accord the cited
mark a narrow scope of to no protection based on how Registrant uses its mark on its
goods, this argument constitutes an impermissible collateral attack on the
registration and carries no weight in the context of this ex parte proceeding.
VI. Conclusion
After considering all of the arguments pertaining to the DuPont likelihood of
confusion factors for which we have evidence, we conclude that Applicant’s mark,
BARTENDER IN A BOX, as used on or in connection with “non-alcoholic beverages
containing fruit juices; non-alcoholic cocktail bases; non-alcoholic cocktail mixes;
[and] non-alcoholic fruit juice beverages” is likely to cause confusion with the
registered mark BARTENDER IN A BOTTLE for “non-alcoholic cocktail mixes.” We
conclude so principally because of the similarity of the marks, the in-part identity of
the goods and the overlapping channels of trade and classes of purchasers.
Decision: The refusal to register Applicant’s mark BARTENDER IN A BOTTLE
under Section 2(d) is affirmed.