Energy Beverages LLC

Trademark Trial and Appeal Board

Jun 1, 2017

No. 85749167 (T.T.A.B. Jun. 1, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Energy Beverages LLC
_____

Serial No. 85749167
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Diane M. Reed and Diana E. Wade of Knobbe, Martens, Olson & Bear, LLP for
Energy Beverages LLC.

Dominic R. Fathy, Trademark Examining Attorney, Law Office 104 (Dayna Browne,
Managing Attorney).
_____

Before Gorowitz, Masiello, and Larkin, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Energy Beverages LLC (“Applicant”) has applied for registration on the Principal
Register of the mark BURN in standard characters for “Carbonated soft drinks
containing caffeine, natural flavors and vitamins,” in International Class 32.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used

1 Application Serial No. 85749167 was filed on October 9, 2012 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intention to
use the mark in commerce.
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in connection with Applicant’s goods, so resembles the mark SWEET BURN as to be
likely to cause confusion, or to cause mistake, or to deceive. The cited mark is
registered in standard character form for “Fruit juices; fruit and juice based
beverages; fruit drinks and soft drinks containing fruit juices; vegetable-fruit juices;
beverages containing vegetable juices,” in International Class 32.2 When the refusal
was made final, Applicant appealed to this Board. The case is fully briefed.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, these are the only
two du Pont factors as to which Applicant and the Examining Attorney have
presented evidence.
(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to 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 (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

2 Reg. No. 4806274, issued September 8, 2015.
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their commercial impression’ such that persons who encounter the marks would be
likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). While we
consider each mark in its entirety, 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 that our ultimate conclusion rests upon a comparison of the marks
in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). “Indeed, this type of analysis appears to be unavoidable.” Id.
The marks resemble each other in appearance, sound and meaning to the extent
that each mark includes the word BURN. The additional term SWEET in the cited
mark is a point of difference in appearance and sound. Regarding the effect that the
word SWEET has on the meaning of Registrant’s mark, Applicant contends that
SWEET BURN “suggests a pleasant warmth or glow or a gentle spiciness, as well
as a sweetness in taste…”; while BURN alone suggests “a fiery heat” that “may be
related to physical energy, such as the ‘burn’ one feels when exercising.”3 When
BURN and SWEET BURN are both used on soft drinks, customers are likely to
interpret the word BURN to have the same meaning in each mark. While SWEET
BURN might, as Applicant contends, suggest that the “burn” is “pleasant,” in the
context of soft drinks customers are more likely to understand it as a literal
reference to the sweet taste of the product. Sweetness is a very common attribute of
soft drinks, although we appreciate that not every soft drink is sweet; accordingly,

3 Applicant’s brief at 9, 4 TTABVUE 13.
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the suggestion of sweetness in the SWEET BURN mark is only a weakly distinctive
differentiation in the relevant commercial context. We find the two marks to be
similar, although not identical, in meaning.
Turning to the marks’ overall commercial impressions, we agree with the
Examining Attorney that BURN is the dominant portion of the cited mark. Even
though SWEET is the first word in the mark, which might give it salience in
appearance and sound, its inherent weakness in meaning will likely lead customers
to focus on the word BURN as having more source-identifying significance.
Applicant’s mark, BURN, consists in its entirety of this dominant portion of the
cited mark. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (approving Board’s treatment of
LION as dominant portion of STONE LION). The word BURN, moreover, is quite
strong in source-indicating capacity, as it is arguably arbitrary as applied to soft
drinks. Customers would likely perceive SWEET BURN beverage as a sweetened,
or sweeter, variety of BURN brand beverage. We therefore find that the marks
create, overall, similar commercial impressions. The du Pont factor of the similarity
or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
(b) The goods.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion, 110 USPQ2d at 1161-62;
Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). We will focus our analysis on a comparison of Applicant’s
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“Carbonated soft drinks containing caffeine, natural flavors and vitamins” with
Registrant’s “soft drinks containing fruit juices.”
The Examining Attorney and Applicant have asked that we take judicial notice of
the following definitions, submitted with their briefs:
soft drink: a usually carbonated nonalcoholic beverage;
especially : SODA POP;4
soft drink: a cold drink that does not contain any
alcohol.5
caffeinated: 2 : containing caffeine ;6
caffeine: a substance in coffee and tea that makes you
feel awake. Drinks that have had the caffeine removed
are decaffeinated or caffeine-free;7
The term natural flavor or natural flavoring means the
essential oil, oleoresin, essence or extractive, protein
hydrolysate, distillate, or any product of roasting, heating
or enzymolysis, which contains the flavoring constituents
derived from a spice, fruit or fruit juice, vegetable or
vegetable juice, edible yeast, herb, bark, bud, root, leaf or
similar plant material, meat, seafood, poultry, eggs, dairy
products, or fermentation products thereof, whose
significant function in food is flavoring rather than
nutritional. Natural flavors, include the natural essence
or extractives obtained from plants listed in subpart A of
part 582 of this chapter, and the substances listed in
§172.510 of this chapter.8

4 MERRIAM-WEBSTER DICTIONARY, attached to the Examining Attorney’s appeal brief, 8
TTABVUE 15.
5 MACMILLAN DICTIONARY, id., 8 TTABVUE 17.
6 , 9 TTABVUE 11.
7 , 9 TTABVUE 17.
8 , 21 C.F.R. § 501.22(a)(3), 9 TTABVUE 21.
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We will take judicial notice of the submitted materials.9
The goods of Applicant and Registrant are both identified as “soft drinks.”
Applicant seeks to distinguish its goods from those named in the cited registration
by arguing that Registrant’s goods are not caffeinated or carbonated.10 This is an
untenable position, because we must consider Applicant’s and Registrant’s goods to
include all goods of the type identified. See, e.g., Levi Strauss & Co. v. Abercrombie
& Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). The
identification of goods in the cited registration does not exclude soft drinks that are
carbonated or contain caffeine, and such soft drinks are therefore included within
the scope of the registration.
Neither does Applicant’s identification of goods exclude soft drinks that contain
fruit juices. Applicant argues that its goods are flavored with “natural flavors,” and
that, according to the regulatory definition of this term, “it is impossible for natural
flavors to be equivalent to fruit or vegetable juices.”11 We disagree. Assuming that
the regulatory definition is applicable, it provides that “natural flavor” includes an
“extractive … which contains the flavoring constituents derived from a … fruit …”
An “extractive” is “something extracted or capable of being extracted,”12 a definition

9 Clearly the Code of Federal Regulations meets the standard set forth in Fed. R. Evid.
201(b). Although Applicant has not demonstrated that the submitted regulation is
applicable to its goods, that is the implication of asking that we consider it. As to dictionary
definitions, see Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) and In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
10 4 TTABVUE 8.
11 9 TTABVUE 6.
12 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 806.
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that is certainly broad enough to encompass, in this context, the juice of a fruit.
Thus, there is no reason for us to assume that Applicant’s goods as identified in the
application exclude soft drinks that are fruit-flavored or flavored with fruit juice.
Applicant argues that “Consumers are unlikely to consider Applicant’s caffeinated
and carbonated beverages to be similar in taste and consumption experience”13 to
Registrant’s goods, saying that Registrant’s goods “do not provide energy and they
do not produce a bubbly-sensation when consumed.”14 This argument is not
persuasive. As we have already stated, Registrant’s identification of goods does not
exclude carbonated or caffeinated beverages; neither does Applicant’s identification
exclude beverages made with fruit flavoring or fruit juice. Therefore there is no
reason to believe that the goods as identified would deliver different “consumption
experiences” or be used by consumers for different purposes.
In order to demonstrate that the goods of Applicant and Registrant are related,
the Examining Attorney has submitted copies of the following eight use-based third-
party registrations, each of which covers goods similar to those of both Applicant
and Registrant:15
Reg. No. Mark Goods Similar to
Applicant’s Goods
Goods Similar to
Registrant’s Goods

4489464 THE DR Non-alcoholic beverages,
namely, carbonated
beverages
Non-alcoholic beverages
containing fruit juices

13 4 TTABVUE 9.
14 4 TTABVUE 8.
15 Office Action of March 31, 2016 at 5-28.
.
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4752310 PIRATE
ENERGY
Non-alcoholic beverages,
namely, carbonated
beverages; Cola drinks

Fruit drinks; Soft drinks
4717004 SONRISA
NATURA
Fruit flavoured carbonated
drinks; Non-alcoholic
beverages, namely,
carbonated beverages

Fruit flavored soft drinks;
Non-alcoholic beverages
containing fruit juices
458718 TEMPLE
TWIST
Non-alcoholic beverages,
namely, carbonated
beverages; soft drinks,
namely, carbonated
beverages containing fresh
fruit juice …

soft drinks, namely,
carbonated beverages
containing fresh fruit juice …
4773395 AQUAIVIA Soft drinks, carbonated
beverages

Fruit-flavored soft drinks
4612986 MY WAY Non-alcoholic beverages,
namely, carbonated
beverages

Non-alcoholic beverages
containing fruit juices
4816399 SQZD Non-alcoholic beverages,
namely, carbonated
beverages

Non-alcoholic sparkling fruit
juice beverages
4812254 SUNNYD
X
Non-alcoholic beverages,
namely, carbonated
beverages

Fruit juice flavored soft
drinks; flavored sparkling
fruit beverages

Third-party registrations which individually cover different goods and services
and are based on use in commerce may serve to suggest that the listed goods and
services are of types which may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). This evidence corroborates the
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relatedness of the soft drinks as identified in the application and in the cited
registration.
The Examining Attorney has also submitted evidence from the internet regarding
three brands of soft drinks that both contain fruit juice and are carbonated:
IZZE sparkling beverages;
WELCH’S sparkling cocktails;
SPARKLING ICE beverages.16
Applicant contends that a broad general market category is not a generally
reliable test of relatedness of products.17 However, in this case there is no
substantial difference between the respective goods as identified. In nature, the
goods of both Applicant and Registrant are soft drinks that are purchased and used
for the same purposes of refreshment. As carbonation and caffeination are common
aspects of soft drinks, and there is no restriction or limitation in the identification of
goods in the cited registration to non-carbonated and non-caffeinated soft drinks,
there is no reason to believe that the goods of both Applicant and Registrant would
not be carbonated and caffeinated. The products might have different flavors, but
the record shows that a single manufacturer may produce soft drinks of different
flavors.18 We find that customers would readily believe that the goods of Applicant
and Registrant emanate from the same source such that there would be confusion
as to source if they were offered under confusingly similar marks. Therefore, the

16 Office Action of March 31, 2016 at 29-34, 37-41.
17 4 TTABVUE 9.
18 Office Action of March 31, 2016 at 29-41.
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du Pont factor of the similarity or dissimilarity of the goods weighs in favor of a
finding of likelihood of confusion.
(c) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks are
similar in commercial impression and the goods are highly similar in nature. We
find that Applicant’s mark, as used on Applicant’s goods, so resembles the cited
registered mark as to be likely to cause confusion or mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.