Chatam International Incorporatedv.Chase Marketing International, LLC

Trademark Trial and Appeal Board

Aug 28, 2013

No. 91189955 (T.T.A.B. Aug. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Chatam International Incorporated
v.
Chase Marketing International, LLC
_____

Opposition No. 91189955 to
Application Serial Nos. 77543093 and 77543094,
both filed on August 9, 2008

_____

Paul M. Lewis for Chatam International Incorporated.

Jay Begler of Niesar & Vestal LLP for Chase Marketing International, LLC.
_____

Before Seeherman, Lykos, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

On August 9, 2008, Chase Marketing International, LLC (“applicant”) filed
applications to register the marks AWESOME (in standard character form)1 and

1 Application Serial No. 77543093, filed pursuant to Section 1(b) of the Trademark Act
alleging a bona fide intent to use the mark in commerce.
Opposition No. 91189955

2

AWESOME VODKA (in standard character form)2 for “distilled spirits.” Chatam
International Incorporated (“opposer”) opposed both applications on the ground of
priority of use and likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d). Opposer alleges prior use of the mark AWESOME in
connection with the sale of prepared alcoholic cocktails of which vodka is an
ingredient “since on or about July 10, 1998.” (Notice of Opposition, par. 3).
In its answer, applicant denied all of the salient allegations in the notice of
opposition and asserted as an affirmative defense that “[o]pposer does not use the
word AWESOME as a trademark, but only as a laudatory term for a prepared
orange cream cocktail mix” and that “[o]pposer does not have protectable rights in
the word Awesome.”3 (Affirmative Defense, pars. 1-2).
The case is now fully briefed.4
The Record
By rule, the record includes applicant’s application file and the pleadings.
Trademark Rule 2.122(b), 37 CFR § 2.122(b). The record also includes the
testimony of Geoff Smitt, Controller of Charles Jacquins et cie, Inc.5 (owner of

2 Application Serial No. 77543094, filed pursuant to Section 1(b) of the Trademark Act
alleging a bona fide intent to use the mark in commerce.
3 Applicant in its brief notes that during trial, opposer introduced via notice of reliance
documents relating to applicant’s purported lack of bona fide intent to use the mark in
commerce but that opposer neither pleaded this claim in its notice of opposition nor argued
the claim in its main brief. Applicant therefore asserts that it would be improper for
opposer to argue this claim on rebuttal. Because the claim was neither pleaded nor tried by
implied consent, it has not been considered.
4 Both parties submitted both redacted and confidential versions of their briefs.
5 We note that in the correspondence address and other filings by opposer its counsel, Paul
M. Lewis, has identified the company name as “Charles Jacquin et Cie. Inc.” However,
Opposition No. 91189955

3

opposer) and the exhibits thereto; the testimony of Kevin O’Brien, Vice President,
Sales of Charles Jacquins et cie, Inc.; the following documents, introduced by
opposer by notice of reliance:
1. Applicant’s answers to opposer’s first set of
interrogatories and exhibits thereto;
2. Applicant’s responses to opposer’s first requests for
admission;
3. Copies of portions of applicant’s website;
4. Copies of third-party registrations for marks
containing the word AWESOME;
and the following documents, introduced by applicant by notice of reliance:
1. Copies of dictionary definitions for the word
AWESOME;
2. Web pages from the website, Yummly.com
(www.yummly.com), accessed on December 14, 2011;
3. Web pages from the website
www.pastemagazine.com;6
4. Office actions from third-party applications Serial
Numbers 77794230 (AWESOME KLOTHING) and
78546946 (TOTALLY AWESOME CANDIES) in which
the marks were refused registration as being merely
descriptive;

during Mr. O’Brien’s testimony deposition he was specifically asked about the “form name”
of the company, and he confirmed that it was “Charles Jacquins et cie, Inc.” Although Mr.
O’Brien corrected certain errors in the transcription of his testimony, he made no change to
the manner in which his company was identified, and therefore we have used this spelling,
including the capitalization, in our opinion.
6 These documents do not include either a URL or the date on which they were accessed,
which generally means that they are not admissible by notice of reliance. See Safer Inc. v.
OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010). However, since opposer
treated them as being of record by discussing them in its brief, without objection, we treat
them as having been stipulated into the record.
Opposition No. 91189955

4

5. Web pages from Beverage Solution Technologies
(www.beveragesolutiontech.com) accessed on
December 20, 2011;
6. Webpages from DRinc Distilled Resources
(www.waytogoidaho.com) and Vodka Perfect
(www.vodkaperfect.com);7
7. Documents produced by opposer consisting of a label,
photograph and sign.8
Facts
Opposer is the holding company that owns Charles Jacquins et cie, Inc. and
licenses all of opposer’s trademarks. O’Brien Test., 18:5-11. All use referred to
herein is use by Charles Jacquins et cie, Inc., which inures to the benefit of opposer,
Chatam International Incorporated.
Opposer sells prepared alcoholic cocktails, including a vodka cocktail flavored
with orange and cream, which has been continuously sold since July 1998. O’Brien
Test., 15:7-9, 8:8-9 and 9:3-7. Opposer has been using the label set forth below
continuously since 1998. O’Brien Test., 19:20-24 and 20:1-7.9

7 Applicant submitted pages from the DRinc Distilled Resources (www.waytogoidaho.com)
and Vodka Perfect (www.vodkaperfect.com) websites. The documents do not indicate the
date on which they were accessed, so they are generally not admissible by notice of reliance.
See Safer Inc. v. OMS Investments, Inc., 94 USPQ2d at 1038. However, since opposer
treated them as being of record by discussing them in its brief, without objection, we treat
them as having been stipulated into the record.
8 Documents products in response to a document production request generally cannot be
made of record by notice of reliance. See Trademark Rule 2.120(j)(3)(ii). However, because
opposer treated these documents as being of record, we treat them as having been
stipulated into the record.
9 Documents reflecting the continuous sale of opposer’s AWESOME ORANGE CREAM
product were submitted under seal as exhibits to the testimony of Geoff Smitt, Controller of
Opposer. Because of the confidential nature of these documents, the figures revealed
therein will not be discussed.
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Opposition No. 91189955

6

shown above), consumers will view the mark as AWESOME ORANGE CREAM.
Therefore, this is the mark we have considered in determining the issue of
likelihood of confusion.
Standing
To establish standing, opposer must rely on its common law use. As
discussed above, opposer has established, by testimony and accompanying exhibits,
that since July 9, 1998 it has used and it continues to use the mark AWESOME
ORANGE CREAM for a vodka cocktail flavored with orange and cream. This is
sufficient to establish opposer’s standing in this proceeding. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Kistner Concrete
Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB
2011); and Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
Priority
Applicant is entitled to rely on the filing date of its applications as the
constructive use date since it did not present evidence of use at trial. Therefore, for
the purpose of establishing priority in this proceeding, the earliest use date on
which applicant can rely is August 9, 2008, the filing date of its applications. Zirco
Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991).
In order for opposer to prevail, it must prove, by a preponderance of the
evidence, that it had proprietary rights before August 9, 2008. Standard Knitting
Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1929 (TTAB 2006). To
Opposition No. 91189955

7

establish that it has common law rights in its mark, opposer must establish that its
mark is either inherently distinctive or “has become distinctive thereof within the
meaning of section 2(f) of the Lanham Act.” Otto Roth & Company v. Universal
Foods Corporation, 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Applicant contends
that opposer’s mark AWESOME ORANGE CREAM is laudatory and thus not
inherently distinctive. Applicant bases its contention on dictionary definitions
wherein AWESOME is defined as “better than usual: extraordinary” (Webster’s
Ninth New Collegiate Dictionary, and as being slang for “remarkable, outstanding”
(The American Heritage Dictionary of the English Language – 4th edition), both
definitions introduced by notice of reliance.
We find persuasive, however, opposer’s submission of over 30 live use-based
Principal Register third-party registrations for marks comprised wholly or in part of
the word AWESOME, and registered without a disclaimer of that term and not
registered pursuant to Section 2(f), as evidence that the word “AWESOME” is
generally treated by the Patent and Trademark Office as suggestive. While the
goods and services in the registrations are varied, a number of them are for food
products. Examples include: Reg. No. 3091604 for the mark AWESOME FOODS
for vegetable based snack foods, Reg. No. 2796147 for the mark AWESOME
ALMONDS for flavored almonds, Reg. No. 3864998 for the mark AWESOME
MARINADE for marinades and Reg. No. 3290193 for the mark AWESOME
APRICOT for fruit conserves, fruit preserves, jams, jellies and marmalade. The
words FOODS, ALMONDS, MARINADE and APRICOT have been disclaimed in
Opposition No. 91189955

8

the respective registrations, thus indicating that the Office regarded AWESOME as
the distinctive part of each mark.
Opposer’s use of AWESOME ORANGE CREAM is similar to the foregoing,
and in particular to the registration for the mark AWESOME APRICOT. ORANGE
CREAM is not the name of opposer’s goods, nor is it a principal component, grade or
size thereof. Instead, “orange cream” describes two ingredients used to flavor
opposer’s vodka cocktails: orange flavors and natural cream. O’Brien Test., 8:8-9.
Although AWESOME certainly has meanings which can be understood to be
positive, we find that it does not directly and clearly convey a laudatory
characteristic of the goods.
Because we find the mark AWESOME ORANGE CREAM to be suggestive of
opposer’s vodka cocktail drinks, applicant’s contention that opposer has failed to
establish that the term has acquired distinctiveness as a mark is unavailing.
However, even if we were to find that opposer’s mark is laudatorily descriptive and
not inherently distinctive, opposer’s use of its mark for a period of more than 10
years prior to the filing date of applicant’s applications is sufficient to establish that
opposer acquired common law rights in AWESOME ORANGE CREAM prior to
applicant’s constructive date of first use. See Otto Roth & Company v. Universal
Foods Corporation, 209 USPQ at 44.
Accordingly, opposer has established prior common law rights in the mark
AWESOME ORANGE CREAM for its vodka cocktail flavored with orange and
cream.
Opposition No. 91189955

9

Likelihood of Confusion
We now turn to the issue of likelihood of confusion. Our likelihood of
confusion determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the likelihood of confusion factors
set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (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”). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Turning first to the du Pont factor of the similarity of the marks, it is a well-
established principle that, in articulating reasons for reaching a conclusion on the
issue of likelihood of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). The word AWESOME is the dominant feature in opposer’s mark since
the terms “ORANGE” and “CREAM” describe two ingredients used to flavor
opposer’s drink. Thus, consumers will look to AWESOME as the portion of the
mark with the source-indicating significance. This word, because it is the first part
Opposition No. 91189955

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of opposer’s mark, is also most likely to be impressed upon the mind of a purchaser
and remembered. See Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988).
Applicant’s marks are AWESOME and AWESOME VODKA. We first
compare applicant’s mark AWESOME with opposer’s mark AWESOME ORANGE
CREAM. Considering the marks in their entireties, and giving greater weight to
the element AWESOME, which is the dominant portion of opposer’s mark and is the
entirety of applicant’s mark, we conclude that the marks are similar in appearance,
sound, connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). See also In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004) (likelihood of confusion found between JOSE
GASPAR GOLD for tequila and GASPAR’S ALE for beer or ale because marks
convey the same commercial impression; the word ALE in the registered mark and
the words JOSE and GOLD in the applied-for mark did not distinguish the marks).
The presence of the descriptive words ORANGE and CREAM in opposer’s mark and
the absence of these words in applicant’s mark are simply not sufficient to
distinguish the marks. Rather, consumers are likely to view the marks as
variations of each other, with ORANGE CREAM added to indicate that the vodka
cocktail contains these ingredients.
We look next at the similarity between applicant’s mark AWESOME VODKA
and opposer’s mark. The dominant portion of both applicant’s mark and opposer’s
Opposition No. 91189955

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mark is the word AWESOME, which is the distinctive part of both marks. As noted
previously, the words ORANGE and CREAM in opposer’s mark are descriptive,
while VODKA in applicant’s mark is generic. In this connection, we note that
applicant has stated that it intends to use this mark for vodka. Applicant’s
responses to opposer’s interrogatory nos. 1 and 2.
When we compare the marks in their entireties, and give greater weight to
the distinctive element AWESOME, we conclude that the marks are similar in
appearance, sound, connotation and commercial impression. Therefore, we find
that both of applicant’s marks, AWESOME and AWESOME VODKA, are similar to
opposer’s mark AWESOME ORANGE CREAM.
Next, we compare the goods to determine the similarity or dissimilarity
between opposer’s goods and the goods identified in the applications. Opposer’s
goods are a vodka cocktail flavored with orange and cream. O’Brien Test., 8:8-9.
Applicant’s goods are identified as “distilled spirits,” which would include “vodka.”10
Thus, in comparing the goods, we consider the goods to be alcoholic cocktails
containing vodka, and vodka. Because both parties’ goods are alcoholic beverages
for which vodka is either the only ingredient, or a major ingredient, the goods are
clearly related. Consumers are likely to assume that vodka and vodka cocktails
sold under very similar marks are from the same source.

10 We take judicial notice that “vodka” is “a distilled liquor.” Encyclopedia Britannica.
Encyclopedia Britannica Online Academic Edition. Encyclopedia Britannica Inc., 2013. Web
version. http://www.britannica.com. The Board may take judicial notice of information from
encyclopedias. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1934 n.6 (TTAB 2011).
Opposition No. 91189955

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As discussed above, opposer sells its goods to various wholesale distributors
who in turn sell to bars, restaurants and liquor stores; and opposer sells its goods in
“control states,” where the states are the retailer and wholesaler, and in which
consumers, including bars and restaurants, go to state-controlled liquor stores to
purchase the product. Because these are normal channels of trade in which
alcoholic beverages travel, and because applicant’s goods, as identified, contain no
restrictions on their channels of trade, we must presume that applicant’s goods
travel in the same channels of trade and are sold to the same purchasers as
opposer’s goods. This du Pont factor of the channels of trade favors opposer.
We have discussed all of the du Pont factors that were argued in the parties’
briefs. To the extent that any other du Pont factors are relevant, we treat them as
neutral. Based thereon, we find that applicant’s use of the marks AWESOME and
AWESOME VODKA for its goods is likely to cause confusion with opposer’s mark
for its goods.
Decision: The opposition is sustained on the ground of likelihood of confusion
under Section 2(d) of the Trademark Act as to applications Serial Nos. 77543093
and 77543094.