Cott Beverages Inc.v.Travis Ryan Barbieri

Trademark Trial and Appeal Board

Sep 17, 2009

No. 91181911 (T.T.A.B. Sep. 17, 2009)

Mailed: September 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cott Beverages Inc.
v.
Travis Ryan Barbieri
_____

Opposition No. 91181911
to application Serial No. 77124976
filed on January 16, 2008
_____

Mary Pat Weyback of Drinker Biddle & Reath LLP for Cott
Beverages Inc.

Travis Ryan Barbieri, pro se
______

Before Seeherman, Quinn and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Travis Ryan Barbieri, seeks registration of
the mark shown below for goods identified in the
application as “soft drinks flavored with tea,” in
International Class 32.

THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
2
His application, which is based on an asserted intention to
use the mark, contains the following descriptions:
The mark consists of (from left to
right) the capitalized letters "CO"
followed by the lowercase, subscript
letters "tea". The arrangement of the
letters is a play on the formula for
carbon dioxide, used to represent the
product: a carbonated iced tea.

Color is not claimed as a feature of the
mark.

Opposer, Cott Beverages Inc., opposes registration of
applicant’s mark on the grounds that, as applied to the
applicant’s goods, applicant’s mark so resembles opposer’s
six previously used and registered marks as to be likely to
cause confusion, to cause mistake, or to deceive under
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer by which he admitted to not
using his mark in commerce in the United States, but
otherwise denied the remaining salient allegations.
The Record
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
notice of reliance on its six pleaded registrations, which
show that the registrations are subsisting and owned by
opposer; and opposer’s testimony deposition, with exhibits,
of John W. Scandrett, director of marketing and category
management for Cott Beverages Inc. Applicant did not take
any testimony or file a notice of reliance. Opposer’s
3
objections to applicant’s use of excerpts from applicant’s
various discovery responses and opposer’s website, first
referenced in the body of applicant’s brief, are sustained.
See Trademark Rules 2.120(j)(3)(i), 2.120(j)(5), 2.121 and
2.122.
STANDING/PRIORITY
Opposer’s pleaded registrations, which are of record,
are summarized as follows:
Registration No. 3346151 for the standard
character mark COTT for “teas” in International
Class 30, issued on November 27, 2007;

Registration No. 749859 for the typed mark COTT
for “maltless beverages sold as soft drinks;
syrups and concentrates for use in the manufacture
of carbonated and uncarbonated soft drinks” in
International Class 32, issued on May 21, 1963,
renewed on April 2, 2003;

Registration No. 1507436 for the typed mark IT’S
COTT TO BE GOOD! for “soft drinks, syrups and
concentrates for use in the manufacture of
carbonated and noncarbonated soft drinks” in
International Class 32, issued on October 4, 1988,
renewed on September 3, 2008;

Registration No. 540457 for the mark shown below

for “nonalcoholic maltless beverages sold as soft
drinks” in International Class 32, issued on April
3, 1951, renewed on December 17, 2001;

Registration No. 679364 for the mark shown below

4

for “concentrates used in the manufacture of soft
drinks” in International Class 32, issued on May
26, 1959, renewed on February 28, 2009;1 and

Registration No. 3004801 for the mark shown below

for “non-alcoholic beverages, namely, soft drinks”
in International Class 32, issued on October 4,
2005.

Because opposer has made its pleaded registrations of
record and has shown that the registrations are valid and
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark, and
that priority is not in issue. King Candy, Inc. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).

1 Section 8 affidavit accepted. Further, review of the Office’s
automated records subsequent to opposer’s submission of a status
and title copy of the registration during its testimony period
reveals that the registration has been renewed for a third time,
5
LIKLIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Opposer presented evidence and argument on the factors
of the similarity of the marks, relatedness of the goods,
similarities of trade channels, conditions under which and
buyers to whom sales are made, fame of the prior mark,
number of similar marks in use on similar goods, and the
variety of goods on which a mark is used. Applicant limited
his arguments to the factors of the similarity of the marks
and relatedness of the goods.
For our determination of likelihood of confusion in the
opposition, we focus our analysis on Reg. No. 749859 for the
typed mark COTT for “maltless beverages sold as soft drinks”
since that mark and goods are the closest to applicant’s

and that ownership is currently in opposer’s name. Time Warner
6
mark and goods. If there is no likelihood of confusion with
respect to that registration, there would be no likelihood
with respect to opposer’s other pleaded registrations.
Conversely, if we were to find likelihood of confusion with
respect to the registration, there would be no need for us
to consider the issue of likelihood of confusion with
respect to the other registrations.
Fame and Relative Strength of Opposer’s Mark
We begin with the factor of fame because, when fame is
present, it “plays a ‘dominant’ role in the process of
balancing the du Pont factors.” Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); see also
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992).
Opposer argues that its “COTT mark is a well-known,
famous mark, entitled to broad protection.” (Page 12,
Opposer’s brief). In support of this assertion, opposer
submitted the testimony of one witness, John Scandrett, its
director of marketing. Mr. Scandrett testified that the
COTT mark has been in use for many years by opposer’s
predecessors in interest and by opposer. Scandrett Test.
pp. 7, 8. Opposer, itself, began marketing COTT cola in

Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).
7
2003. Scandrett Test. p. 8. Over one million cases of
beverages with the COTT brand have been sold yearly over the
last three years. Scandrett Test. p. 20. Cott Beverages
Inc. is the fourth largest supplier of non-alcoholic
beverages in the United States and sells goods to many large
retail outlets in the United States such as Wal-Mart,
Target, Safeway, and Publix. Scandrett Test. pp. 5, 6.
Based on this record, it is not clear whether opposer
has a large share of the non-alcoholic beverage market or a
small share. For instance, no evidence was submitted to
show how its sales figures compare to the three largest
shareholders of the non-alcoholic beverage market, or to the
brands of beverages sold by those companies. Opposer also
did not provide any evidence of advertising expenditures.
Additionally, while there is evidence of record that shows
opposer sold COTT branded beverages in the United States for
some time, it appears from the record that opposer did not
enter the U.S. market in any substantial way until 2003.
Scandrett Test. pp. 8, 9.
Raw numbers of sales alone may be misleading and must
be placed in some context in determining the fame of a mark.
Morgan Creek Productions, Inc. v. Foria International, Inc.,
91 USPQ2d 1134 (TTAB 2009). On this record, while opposer’s
COTT marks appear to be strong based on opposer’s evidence
of use and the lack of evidence that would indicate the mark
8
is not strong, such as any use of similar marks by third
parties, we find that opposer has not met its burden to show
that it owns a famous mark. Lacoste Alligator S.A. v.
Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009)(“Because of
the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and
the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting that its
mark is famous to clearly prove it.”); Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901 (TTAB 2007).
In view thereof, the strength of opposer’s registered marks
of record does not reach the level of playing “a ‘dominant’
role in the process of balancing the du Pont factors.”
Recot, 54 USPQ2d at 1897.
Relatedness of the Goods
We make the determination of the relatedness of the
goods based on the parties’ identification of goods as they
are recited in the registration and application. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). Because opposer’s goods are
broadly identified as “maltless beverages sold as soft
drinks,” we must presume that the scope of the
identification includes all types of soft drinks that do not
contain malt, including applicant’s “soft drinks flavored
with tea” and, thus, the goods are legally identical. Id.
9
See also, Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991).
In addition, the record establishes that opposer has
used the mark COTT for tea beverages since prior to the
filing of applicant’s application. This factor weighs in
favor of a finding of likelihood of confusion.
Channels of Trade, Class of Purchasers and Conditions of
Sales
With regard to the channels of trade and classes of
purchasers, inasmuch as the goods are legally identical,
absent restrictions in the identifications as to trade
channels and purchasers, we must presume that the parties’
goods would be sold in the same channels of trade and to the
same relevant purchasers, including ordinary consumers,
under the same conditions of sale. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003); Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom, 16 USPQ2d 1783. In view thereof,
the parties’ channels of trade and classes of purchasers
must be deemed to be the same. As to the conditions of
sales, these goods are general consumer items that are
inexpensive and subject to impulse purchases. In view
10
thereof, these factors weigh in favor of a likelihood of
confusion.
Variety of Goods
The record shows that opposer uses the COTT brand for
soft drinks having a variety of flavors. See Scandrett
exhibits A-C, G-H, J-N and I. Although its products are
confined to soft drinks, consumers would not find it
surprising if opposer were to use its mark for soft drinks
flavored with tea, particularly since opposer already uses
its mark for teas and for soft drinks. This factor weighs
in favor of a finding of likelihood of confusion. Nike Inc.
v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1195 (TTAB
2007)(“The fact that opposer applies its marks to a variety
of sports products makes it more likely that purchasers,
aware of opposer’s use of the mark on a variety of sports
products, when seeing a similar mark used in connection with
backpacks, duffel bags and other sports bags, are likely to
believe that these products are also being produced or
sponsored by opposer”).
Similarities of the Marks
We now turn to consideration of the first du Pont
factor, i.e., whether applicant’s mark,
and opposer’s COTT mark are sufficiently similar in terms of
their overall appearance, sound and commercial impression
11
that confusion as to the source of the goods offered under
the respective marks is likely to result.
Opposer argued the marks are visually, aurally and
connotatively similar. Opposer also argued there is no
correct way to pronounce a trademark. Applicant argued his
mark is a play on the molecule CO2 (as in carbon dioxide)
since his goods are carbonated.
We find that applicant’s mark is substantially
different in appearance, sound, connotation and commercial
impression from opposer’s mark. Opposer’s mark is COTT,
while applicant’s mark depicts CO in large letters, with the
word tea, the flavor and major ingredient of the goods,
written in smaller letters below it. The effect of this
depiction is that CO appears to be the source-indicating
portion of the mark, with tea indicating the contents of the
drink. As for pronunciation, while it is true that there is
no correct pronunciation of a mark, the manner in which
applicant’s mark is depicted suggests that consumers would
refer to it as CO or possibly as the individual letters “C-
O,” followed by the word TEA. Contrary to opposer’s
argument, there is no basis for us to conclude that
consumers would pronounce applicant’s mark “as COT-TEA, the
phonetic equivalent of “COTT Tea.” (Page 7, opposer’s
brief.) As to connotation, opposer’s mark does not evoke
any particular meaning other than possibly a surname. In
12
contrast, applicant’s mark, because of the way it is
depicted, emphasizes the CO portion, thereby suggesting the
connotation of perhaps an abbreviation for “company,” or of
the initials C.O., plus the word “tea” to describe the
flavor of the soft drinks. Further, given the presentation
and the type of goods with which it is used, namely
carbonated beverages, many consumers may understand the mark
to be a play on the chemical formula for carbon dioxide,
CO2. Thus, the overall commercial impression of the marks
is distinctly different and any similarities in appearance,
based on the presence of the letters C, O and T, are vastly
outweighed by the dissimilarities in the marks.
Because the marks are so different, the du Pont factor
of the dissimilarities of the marks outweighs the other
relevant du Pont factors discussed above. In view thereof,
we conclude that there is no likelihood of confusion between
applicant’s mark CO tea and design and opposer’s mark COTT.
See Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142, 1145 (Fed. Cir. 1991)(“We know of no reason
why, in a particular case, a single du Pont factor may not
be dispositive”). See also, In re E.I. du Pont de Nemours &
Co., 177 USPQ at 567 (“each [of the thirteen elements] may
from case to case play a dominant role”). In view of this
finding, there is also no likelihood of confusion between
13
applicant’s mark and the other, more different, marks in
each of opposer’s pleaded registrations.
Decision: The opposition is dismissed.