Comexa Ltda.

Trademark Trial and Appeal Board

Mar 30, 2001

No. 75396043 (T.T.A.B. Mar. 30, 2001)

03/30/01 Paper No. 12
RLS/hlj
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Comexa Ltda.
________
Serial No. 75/396,043
_______
Carl S. Clark of Price, Heneveld, Cooper, DeWitt & Litton
for Comexa Ltda.
Karen M. Strzyz, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney)
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Comexa Ltda. (applicant), a Colombian corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark shown below:
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/396,043
2
for chili sauce and pepper sauce.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
USC §1052(d), on the basis of Registration No. 2,056,533,
issued April 29, 1997, covering the mark AMAZON for
restaurant services, issued to Amazon, Inc., a California
corporation.
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested. We affirm.
The Examining Attorney argues that confusion is likely
because of the similarities in the marks and relatedness of
the goods and services. With respect to the marks, the
Examining Attorney argues that the word portion of
applicant’s mark is likely to be used in calling for its
goods, and that one feature of a mark may be given greater
weight in the likelihood-of-confusion analysis. Concerning
the relatedness of applicant’s chili sauce and pepper sauce
to registrant’s restaurant services, the Examining Attorney
has submitted copies of 50 registrations where various
entities have registered the same marks for various sauces
on the one hand and restaurant services on the other. The
1 Application Serial No. 75/396,043, filed November 25, 1997,
based upon allegations of use and use in commerce since June 1,
1995. In the application, applicant has claimed ownership of
Supplemental Register Reg. No. 2,143,628, for the mark “AMAZON
PEPPER” (“PEPPER” disclaimed) for red pepper sauce, chili
pepper sauce and other pepper products.
Ser. No. 75/396,043
3
Examining Attorney notes that, generally, these third-party
registrations are not ones which cover a whole line of food
items. The Examining Attorney also argues that restaurants
often bottle sauces which are featured at those
restaurants. It is the Examining Attorney’s position, in
view of this record, that consumers are accustomed to
seeing such goods as sauces and spices sold under one mark
in retail stores as well as the same mark used in
connection with their related restaurant establishments.
In her brief, the Examining Attorney has cited a number of
cases involving both food products and restaurant services
where there were findings of likelihood of confusion.
The third-party registrations, 48 of which are use-
based, cover both generally well-known marks and those
which are perhaps not so widely known, issuing both for
restaurant services on the one hand and various sauces on
the other. These include such marks as CHI-CHI’S, TACO
BELL, BOOKBINDER’S, MEMPHIS BAR-B-Q, RED HOT & BLUE,
TODOROFF’S, FOG ISLAND CAFÉ, CAFÉ TERRA COTTA, WATERFRONT
ALE HOUSE, BOARDROOM BAR-B-Q, TWIN ANCHORS, KING STREET
BLUES, KULETO’S ITALIAN RESTAURANT, THE ITALIAN OVEN,
HICKORY BILL’S BAR-B-QUE, THAI KITCHEN, CHINA DRAGON,
MARIA’S and others.
Ser. No. 75/396,043
4
Applicant, on the other hand, argues that the “key”
parrot design element and the “stylized lettering” of its
mark create a different commercial impression from that of
the registered mark AMAZON. Pointing to such third-party
registrations as AMAZON for soft drinks, AMAZON JUNGLE for
ice tea and AMAZON GLACE for frozen confections, it is
applicant’s position that the third-party registrations
show the mark AMAZON is diluted and not a strong one.
Applicant argues that there are 136 active registrations
and pending applications covering this mark in all classes
including those pertaining to the food industry and the
restaurant industry. It is applicant’s position that its
goods and registrant’s services are unrelated and travel in
different channels of trade, with applicant’s goods being
sold in grocery and convenience stores. Concerning the
third-party registrations, covering both goods similar to
applicant’s as well as restaurant services, noted by the
Examining Attorney, applicant states, brief, 5-6:
While there may be some very strong marks
such as Taco Bell® and Chi Chi’s® that the
public might associate with both sauces or
salsa and restaurant services, in the case
of a relatively weak mark such as AMAZON,
usage of the mark for both chile sauce or
pepper spice and restaurant services would
not likely cause confusion because the
relevant public would not think that
Applicant’s chile sauce and pepper spice
Ser. No. 75/396,043
5
emanate from, or are associated with
Registrant’s restaurant services.
Applicant’s attorney also states that applicant’s mark has
been in use for over five years and that applicant knows of
no instances of actual confusion.
With respect to these arguments, the Examining
Attorney contends that that there are only five
registrations with this word in Class 30 (various food
products and sauces) registrations, covering such goods as
ice cream, tea and flour, and that there is only one AMAZON
registration for restaurant services; that, in any event,
the existence of any allegedly confusingly similar mark on
the register does not aid an applicant in registering
another confusingly similar mark, and that, where there is
no evidence concerning the nature and extent of applicant’s
and registrant’s uses and no opportunity to hear from
registrant, counsel’s statement concerning the lack of
actual confusion is entitled to little weight.
Upon careful consideration of this record and
arguments of the attorneys, we believe that confusion is
likely. First, considering the marks, while applicant’s
mark obviously differs from the registered mark to the
extent that it contains a parrot design, we believe that
these marks are identical in sound and very similar in
Ser. No. 75/396,043
6
appearance and in commercial impression. In other words,
if the restaurant services and applicant’s sauces are
otherwise likely to be attributed to the same source, the
mere existence of the parrot design in applicant’s mark is
not likely to be seen, in our view, as indicating that
applicant’s goods come from a different source. The AMAZON
and parrot design mark is likely to be viewed as a slight
variation of registrant’s AMAZON registered mark, AMAZON
being the most significant origin-indicating feature of
applicant’s mark. This is the part of applicant’s mark
that would be used in asking for applicant’s goods. See In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987).
With respect to the third-party marks which applicant
has relied on, some are for obviously different marks.
Also, there is no evidence of the use of these marks in the
marketplace, and we do not know therefore if the general
public is familiar with them or has come to distinguish the
source of these goods.
Concerning the relatedness of applicant’s goods and
registrant’s services, the Board has noted that there is no
per se rule that confusion is likely when the same or
similar mark is applied to food products on the one hand
and to restaurant services on the other. In re Azteca
Ser. No. 75/396,043
7
Restaurant Enterprises Inc., 50 USPQ2d 1209, 1210 (TTAB
1999). As in that case, we believe that the record herein
shows that there is “something more” than simply food
versus restaurant services, in the language articulated by
our primary reviewing court in Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982).
Here, the numerous third-party registrations submitted by
the Examining Attorney have some probative value to the
extent that they “serve to suggest that the goods and
services listed therein (which are the same types of goods
and services involved here) are of a kind which may emanate
from a single source.” In re Azteca, supra, at 1211; In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470, at n.6 (TTAB 1988), aff’d. (unpublished), Appeal No.
88-1444 (Fed. Cir. Nov. 14, 1988). The Mucky Duck case is
particularly noteworthy for what the Board stated, at 1469:
Although these goods [mustard] and services
[restaurant services] obviously differ,
mustard is, as the Examining Attorney has
noted, a condiment which is commonly
utilized in restaurants by their patrons,
especially in such restaurants as
delicatessens, fast food houses, steak
houses, taverns, inns, and the like, and we
think it is common knowledge that
restaurants sometimes market their house
specialties, including items such as salad
dressings, through retail outlets.
Ser. No. 75/396,043
8
As we observed in that case and as the Examining Attorney
has argued, of all food products sauces and dressings are
perhaps the ones most likely to be marketed by the
restaurants in which those items are served.2 Thus, the
nature of the particular food items here is significant.
We also note that the cited registration is broad
enough to include a nationwide chain of restaurants
operating under this mark, as well as a single restaurant-—
we simply have no information concerning registrant’s
specific services. However, we must give the registration
of this mark, at the very most only somewhat suggestive of
the services, appropriate protection.
While restaurant meals can of course vary greatly in
price, such meals can be had inexpensively, and are
rendered to the general public. Applicant's sauces must be
presumed to be relatively inexpensive grocery purchases.
This factor, too, weighs in favor of a finding of
likelihood of confusion.
2 Applicant here seeks registration of its mark for sauces and
the 48 use-based registrations cover sauces of one type or
another. See also In re Golden Griddle Pancake House Ltd., 17
USPQ2d 1074 (TTAB 1990)(“restaurants frequently package certain
of their products for retail sale”).
The dissent notes that in Mucky Duck, we noted that certain
third-party registrations are entitled to “very little, if any,
persuasive value.” However, that comment was directed to the
third-party registrations filed under Section 44 of the Act
(based on foreign registrations) rather than those based on use
Ser. No. 75/396,043
9
With respect to applicant’s ownership of a prior
registration on the Supplemental Register (AMAZON PEPPER),
we observe that the issue before us is likelihood of
confusion with the cited mark. The fact that applicant
owns a Supplemental Register registration is not
particularly relevant to our determination. See In re
Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869
(Fed. Cir. 1985) (“[Applicant’s] existing rights arising
from its registration of DURANGOS for cigars are unaffected
by the ruling with respect to the subject application… The
basic flaw in [applicant’s] analysis is that each
application for registration of a mark for particular goods
must be separately evaluated. Nothing in the statute
provides a right ipso facto to register a mark for
additional goods when items are added to a company’s line
or substituted for other goods covered by a registration.
Nor do the PTO rules afford any greater rights…”); and In
re Sunmarks Inc., 32 USPQ2d 1470, 1472-73 (TTAB 1994)(“The
cases are legion holding that each application for
registration of a mark for particular goods or services
must be separately evaluated… Section 20 of the Trademark
Act, 15 USC Section 1070, gives the Board the authority and
in commerce. Here, 48 out of the 50 third-party registrations
submitted by the Examining Attorney are use-based.
Ser. No. 75/396,043
10
duty to decide an appeal from an adverse final decision of
the Examining Attorney. This duty may not be delegated by
adoption of conclusions reached by Examining Attorneys on
different records. Suffice it to say that each case must
be decided on its own merits based on the evidence of
record. We obviously are not privy to the record in the
files of the registered marks and, in any event, the
issuance of a registration(s) by an Examining Attorney
cannot control the result of another case.”)
Finally, while the dissent fears that there will
always be registrations covering both restaurant services
on the one hand and an involved food item on the other,
leading to the establishment of a per se rule finding
likelihood of confusion, we believe that we should not
substitute another per se rule (that of finding no
likelihood of confusion whenever we have restaurant
services against food products, because there will
allegedly always be some evidence of relatedness between
food products and restaurant services) for a careful
evaluation of the quality and quantity of the evidence in
each case. Precedent clearly requires us to evaluate the
evidence and decide each case on its own merits.
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 152 (CCPA 1978)(“…each case must be
Ser. No. 75/396,043
11
decided on the basis of all relevant facts which include
the marks and the goods as well as the marketing
environment in which a purchaser normally encounters them
and the experience generated as a result of their use in
the marketplace…”). Applicant is free to rebut a showing
of the Examining Attorney with countervailing evidence
demonstrating that it is unlikely that the involved food
products and restaurant services are commercially related,
either by other registrations, a declaration from someone
knowledgeable in the trade, or by other means.
Accordingly, we agree with the Examining Attorney that
the purchasing public, aware of registrant’s AMAZON
restaurant services, who then encounter applicant’s AMAZON
and parrot design chili sauce and pepper sauce in grocery
and convenience stores, are likely to believe that these
goods and services come from, or are sponsored or licensed
by the same source. If we had any doubt on this issue,
that doubt, in accordance with precedence, must be resolved
in favor of the registrant and prior user. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.