David John Critchley

Trademark Trial and Appeal Board

Sep 28, 2012

No. 78877552 (T.T.A.B. Sep. 28, 2012)

OPN

Mailed:
September 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Critchley
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Serial No. 78877552
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Peter B. Kunin of Downs Rachlin Martin PLLC for David John
Critchley.

Kyle Christopher Peete, Trademark Examining Attorney, Law
Office 112 (Angela Bishop Wilson, Managing Attorney).
_______

Before Bucher, Zervas and Wolfson, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
David John Critchley (“applicant”) filed an
application (Serial No. 78877552) to register KICK ASS (in
standard character form) on the Principal Register for
“energy drinks, fruit and vegetable juices, fruit and
vegetable juice-based drinks, bottled drinking water,
mineral and tonic water” in International Class 32.
Applicant seeks registration under the provisions of
Trademark Act §§ 1(b) and 44(e), 15 U.S.C. §§ 1051 (b) and
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 78877552
2
1126(e). The application also includes clothing in
International Class 25, but such goods are not the subject
of any final refusal to register; only the International
Class 32 goods are involved in this appeal.
The examining attorney issued a final refusal to
register the International Class 32 goods under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the standard
character mark of Registration No. 2896141, which
registered as KICK ASS COFFEE and which has been recently
amended to KICK ASS, for “coffee,” in International Class
30, as to be likely to cause confusion or mistake or to
deceive.
Applicant appealed the final refusal. Both applicant
and the examining attorney filed briefs. We affirm the
refusal to register.
We first address two preliminary matters. The first
preliminary matter concerns the exhibit first submitted by
applicant with its reply brief, a copy of registrant’s
request to amend the cited registration. The additional
evidence submitted with applicant’s reply brief has not
been considered. The record closed with the filing of the
Notice of Appeal. Trademark Rule 2.142 (d).
Serial No. 78877552
3
We now turn to the second preliminary matter, namely,
the identity of the mark which is the subject of the cited
registration. While applicant maintains that the mark we
must consider is KICK ASS COFFEE, which was the mark of the
registration when the examining attorney issued the final
refusal, the examining attorney maintains that the mark is
KICK ASS, which is the mark currently identified in the
registration. Subsequent to the filing of the appeal on
December 11, 2008, registrant filed on April 12, 2011,
under Section 7(c) of the Trademark Act, 15 U.S.C.
§ 1057(c), a request to amend its registered mark from KICK
ASS COFFEE to KICK ASS. The request was approved and the
mark was amended on May 3, 2011 to KICK ASS. Applicant’s
first brief was subsequently filed on September 14, 2011.1
Thus, we must determine what mark we consider, which
has been amended after the final Office action issued but
prior to the filing of applicant’s first brief. On one
hand, it is a matter of fairness to the applicant, who has
prosecuted the application and has offered evidence and
developed a strategy believing the mark to be a particular
term. On the other hand, a mark may not be amended if

1 Applicant states in its main brief at p. 3, without
explanation, that “[i]t is unclear from the USPTO online records
whether that request was actually granted.” The online record
for Registration No. 2896141 clearly indicates that the cited
registration was amended on May 3, 2011.
Serial No. 78877552
4
there is a material alteration to the mark, and an
amendment to a registered mark will only be accepted when
“the new form … [has] the impression of being essentially
the same mark.”2 In re Hacot-Colombier, 105 F.3d 616, 620,
41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l
Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740
(TTAB 1983). Additionally, an applicant may request a
remand to the examining attorney after the amendment to the
registered mark has been approved by the Office to make
further arguments against registration or introduce
additional evidence. In this case, neither the examining
attorney nor applicant requested a remand for further
prosecution in light of the amendment to registrant’s mark.
After careful consideration of this issue, we
determine that our decision must be based on the present
form of the mark; that is, KICK ASS, not KICK ASS COFFEE.
However, to accord applicant the benefit of a complete
analysis, we will first consider the registrant’s mark as
KICK ASS and then as KICK ASS COFFEE.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set

2 Trademark Act Section 7(e), 15 U.S.C. Section 7(e), provides,
in part, “the Commissioner for good cause may permit any
Serial No. 78877552
5
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the similarity or dissimilarity of
the marks. In determining the similarity or dissimilarity
of marks, 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, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
KICK ASS
As KICK ASS, the marks are identical. Further, KICK
ASS in regard to the involved goods has the same meaning
and commercial impression; the meaning and commercial
impression of the mark does not change when used on
applicant’s or registrant’s goods. See the definition

registration to be amended … Provided, That the amendment … does
not alter materially the character of the mark.”
Serial No. 78877552
6
submitted by the examining attorney with his brief taken
from Dictionary of American Slang and Colloquial
Expressions (4th ed. 2007), located at dictionary.com,
namely, “really fine; excellent; cool (Usually
objectionable.): That was a real kick-ass party you had
the other night!”3
KICK ASS COFFEE
While we consider the marks in their entireties in
terms of sound, appearance, meaning and commercial
impression, it is nonetheless not improper to accord more
or less weight to a particular feature of a mark. In re
National Data Corp., 753 F.2d 1056, 24 USPQ2d 749 (Fed.
Cir. 1983). Descriptive or generic matter, and matter that
has been disclaimed because it is descriptive or generic,
is typically less significant or less dominant when
comparing marks. See In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Nat’l Data
Corp., 224 USPQ2d at 752. See also, Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
In re Code Consultants Inc., 60 USPQ2d 1699 (TTAB 2001) (a
descriptive term is less significant in creating the mark’s
commercial impression).

3 See In re Future Ads LLC, 103 USPQ2d 1571 (TTAB 2012) (the
Board may take judicial notice of dictionary definitions taken
Serial No. 78877552
7
COFFEE is the generic term for registrant’s goods.
KICK ASS, as a unitary term, is therefore the dominant
component of the mark, and KICK ASS COFFEE is the legal
equivalent of KICK ASS. Applicant’s mark is identical to
the dominant component of the mark.
Thus, even if registrant’s mark is considered as KICK
ASS COFFEE, the du Pont factor regarding the similarity of
the marks is resolved against applicant.
Applicant states that confusion is not likely because
KICK ASS is a weak term for coffee. In support, applicant
relies on the following five registrations that contain the
wording KICK ASS:
Registration No. 1696285 for KICK ASS FILET for
“filet of beef served over two pepper sauces with
bernaise sauce”;

Registration No. 2235525 for BEST EVER KICK-ASS
for “prepared alcoholic cocktail”;

Registration No. 2431193 for KICK ASS KARAOKE and
design for “entertainment services in the nature
of live performances by a musical group”;

Registration No. 3047281 for KICK ASS PICTURES
and design for “prerecorded videotapes featuring
adult oriented entertainment; multimedia software
recorded on CD-Rom featuring adult oriented
entertainment” and “videotape production;
entertainment in the nature of production of
prerecorded adult oriented videotapes and
multimedia software production services;
entertainment in the nature of prerecorded adult-

from the Internet that appear in printed form). We take judicial
notice of this definition of “kick ass.”
Serial No. 78877552
8
oriented programming distributed by audio and
video media and a global computer network;
distribution of adult-oriented television
programming to cable television systems”; and

Registration No. 2556137 for KICKASS (stylized)
for “parts and accessories for land and marine
vehicles, namely, air cleaner assemblies--
replacement parts for air cleaner assemblies; air
cleaner/flame arrestor assemblies; pre-cleaner
air filter assemblies; air cleaner vent breather
assemblies; air filter replacement elements; air
cleaner to carburetor adaptors.”

These registrations are of limited probative value
because they recite goods (and services) which are
different from applicant’s and registrant’s goods. In
addition, as noted by the examining attorney, third-party
registrations are generally entitled to little weight in
determining the strength of a mark, because such
registrations do not establish that the registered marks
identified therein are in actual use in the marketplace or
that consumers are accustomed to seeing them. See AMF Inc.
v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198
(TTAB 2009).
We next consider the du Pont factor regarding the
similarity or dissimilarity and nature of the goods. The
goods need not be identical to find likelihood of confusion
under Section 2(d) of the Trademark Act. Rather, they need
only be related in such a way that the circumstances
Serial No. 78877552
9
surrounding their marketing would result in relevant
consumers mistakenly believing that the goods originate
from or are associated with the same source. See On-Line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re International Tel. &
Tel. Corp., 197 USPQ 910 (TTAB 1978).
Applicant argues that “coffee” in registrant’s
identification of goods is limited to “ingredients for
making coffee beverages (i.e., ground coffee, coffee
beans)” as opposed to coffee beverages.
We must consider the goods as they are identified in
the registration and application, and it is improper to
import any extraneous limitations. Paula Payne Prods. v.
Johnson Publ. Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”). Thus, where an identification of
goods is broadly constructed, we must allow for all
possible items that may fall within the identification. In
addition, TMEP § 1402.03 (8th ed. 2011) states:
The common understanding of words or phrases used
in an identification determines the scope and
nature of the goods or services. A basic and
widely available dictionary should be consulted
to determine the definition or understanding of a
commonly used word.

Serial No. 78877552
10
“Coffee” is defined on the online version of Merriam-
Webster Dictionary accessed at merriam-webster.com as4

As demonstrated in the definition, “coffee” includes both a
beverage and the seeds (or beans). Therefore, we must
presume that “coffee” as broadly identified in the
registration encompasses all types of coffee, including
whole bean, ground and roasted coffee, as well as coffee
beverages. Applicant’s argument that the goods are limited
to “not … any coffee beverages, but to coffee grounds or
coffee beans” is rejected.
As evidence that the goods are related, the examining
attorney introduced a number of third-party registrations,
only two of which are probative and serve to suggest that

4 We take judicial notice of this definition.
Serial No. 78877552
11
the recited goods may emanate from a common source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We
consider the following:
Registration No. 2570227 including “coffee” and
“spring water, mineral water, seltzer water, soda
water, fruit juices”; and

Registration No. 3070033 including “coffee” and
“apple cider, fruit punch, fruit juice.”5

In addition, the examining attorney made of record (with
his July 16, 2011 Office action) web pages from
starbucks.com and dunkindonuts.com, which demonstrate use
of the same mark in connection with both coffee and fruit-
based drinks. See (i) “coffee Frapuccino” and “soy
strawberries and crème Frapuccino”; (ii) “Doubleshot energy
cinnamon dolce drink” and “Doubleshot light espresso
drink”; and (c) “strawberry Coolatta” and “coffee
Coolatta.” From this evidence, we find that purchasers
would consider the same mark or highly-similar marks on
such goods to emanate from the same source.
With regard to trade channels, applicant maintains
that registrant’s goods would be offered for sale in the

5 We do not consider the four registrations submitted by the
examining attorney which have been cancelled. See In re
Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB 2011)
(“cancelled registrations have no probative value at
all.”). We have also not considered Registration
No. 3151246 which recites “non-alcoholic drink mixes,
Serial No. 78877552
12
grocery store aisle where coffee ingredients are located
and applicant’s goods would be offered for sale where
beverages are displayed; and that the sale of goods in the
same store is not a sufficient basis for concluding that
the goods are so related that a likelihood of confusion
arises, citing Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978).
Brief at 7. We disagree. The Internet evidence from
starbucks.com and dunkindonuts.com demonstrates that goods
of the kind listed in the application and the cited
registration are not only offered in grocery stores but at
least are advertised side by side on websites.
Applicant also argues in its brief that “[i]t would be
absolutely incongruous, and likely deceptive, if the owner
of KICK ASS COFFEE began using its mark KICK ASS COFFEE to
identify” ready-to-drink, non-coffee beverages. That is
not an issue before us. The question in determining
whether a likelihood of confusion exists is whether the
marks will confuse people into believing that the goods
they identify come from the same source. In re West Point-
Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972).

namely, smoothie and frappe mixes,” goods which are not
involved in this appeal.
Serial No. 78877552
13
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant’s
arguments relating thereto, we conclude that, when
potential purchasers of applicant’s and registrant’s goods
encounter the applied-for and registered marks for their
respective goods, they are likely to believe that the
sources of these goods are in some way related or
associated with one another. As a result, there is a
likelihood of confusion.
DECISION: The refusal to register under Section 2(d)
of the Trademark Act for the goods in International Class
32 is affirmed. The application will proceed to
publication only for the International Class 25 goods.