International Coffee & Tea, Inc.

Trademark Trial and Appeal Board

Apr 1, 2003

No. 74475672 (T.T.A.B. Apr. 1, 2003)

Hearing: Paper No. 36
June 17, 1998 JQ
Mailed: 4/1/2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Coffee & Tea, Inc.
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Serial No. 74/475,672
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Roger H. Stein and Monique A. Morneault of Wallenstein &
Wagner for applicant.
Angela Bishop Wilson, Trademark Examining Attorney, Law
Office 101 (R. Ellsworth Williams, Managing Attorney).
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Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by International Coffee
& Tea, Inc. to register the mark THE COFFEE BEAN (“COFFEE”
disclaimed) for “coffee beans, ground coffee, loose tea,
tea bags, hot chocolate, chocolate-based food beverages and
pastries” (in International Class 30), and “retail shops
and mail order services featuring coffee, chocolate and
tea-based beverages, coffee beans, ground coffee, chocolate
products, loose tea and tea bags, pastries, coffee and tea
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 74/475,672
2
related products, namely, cups, mugs and filters and
clothing, namely, t-shirts; and office coffee supply
services” (in International Class 42).1 Applicant claimed
acquired distinctiveness under Section 2(f) of the
Trademark Act; the Examining Attorney accepted applicant’s
evidence of acquired distinctiveness.
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant’s mark, when used in connection with
applicant’s goods and services, so resembles the previously
registered marks
for “coffee, tea, herbs and spices”2 and THE COFFEE BEANERY,
LTD. for “coffee, tea, processed herbs, and spices,”3 both
registrations owned by the same entity, as to be likely to
cause confusion.
1 Application Serial No. 74/475,672, filed December 29, 1993,
alleging first use anywhere and first use in commerce in 1968.
2 Registration No. 1,187,008, issued January 19, 1982; renewed.
The word “Coffee” is disclaimed.
3 Registration No. 1,610,706, issued August 21, 1990; renewed.
The registration includes disclaimers of “Coffee” and “Ltd.”
Ser No. 74/475,672
3
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs, and both
appeared at an oral hearing.4
Applicant argues, in urging that the refusal be
reversed, that applicant’s mark is different in sound,
appearance and commercial impression from the registered
marks. Applicant asserts that the Examining Attorney, in
comparing the marks, improperly dissected them, thereby
ignoring the well settled principle that marks must be
considered in their entireties in analyzing likelihood of
confusion. Applicant also points to the differences in
meanings between a “bean” which is an “edible nutritious
seed of various species of leguminous plants,” and
“beanery” which is a “cheap, usually inferior restaurant.”
Applicant does not dispute that its application and the
cited registrations overlap to the extent that the
identifications include coffee and tea, but goes on to
contend that the mere presence of the term “coffee” in the
marks does not result in a likelihood of confusion. In
this connection, applicant points to the presence of the
word “coffee” in several of the third-registrations
4 As noted above, the oral hearing was held almost five years
ago. The delay in deciding this case was occasioned by repeated
suspensions of the appeal since the hearing to allow applicant
time to obtain registrant’s consent to the registration sought
herein. The attempt ultimately was unsuccessful.
Ser No. 74/475,672
4
submitted by the Examining Attorney. Applicant also
asserts that coffee purchasers have become sophisticated,5
and points to the absence of any actual confusion between
the marks despite over twenty years of contemporaneous use.
Applicant submitted dictionary definitions of the words
“bean” and “beanery.”
The Examining Attorney maintains that the goods are,
in part, identical, and that applicant’s services are
related to registrant’s goods inasmuch as the services
feature coffee, tea and related items. As to the marks,
the Examining Attorney contends that they are substantially
similar, having only minor distinctions. Purchasers would
believe, the Examining Attorney argues, that registrant has
merely adopted a variation of its marks and expanded its
trade channels to include retail and mail order services.
The Examining Attorney also is not convinced that coffee
consumers are sophisticated, and is not persuaded by the
lack of actual confusion. The Examining Attorney submitted
third-party registrations showing that others have adopted
the same mark for the types of goods and/or services
involved herein.
5 In support of this contention, applicant submitted “Exhibit A”
with its brief, and requested that the Board take judicial notice
of it. Simply put, the printout from an electronic database is
not proper subject matter for judicial notice. Accordingly, this
evidence has not been considered in reaching our decision.
Ser No. 74/475,672
5
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion. In
re E.I. du Pont de Nemours and Co., 476 F.2d 1098, 192 USPQ
24 (CCPA 1976). Not all of the du Pont factors may be
relevant or of equal weight in a given case, and “any one
of the factors may control a particular case.” In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003), citing In re Dixie Restaurants,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
Turning first to compare applicant’s goods and
services with registrant’s goods, the involved application
and cited registrations all list coffee and tea. Thus,
there is no disputing the fact that the goods, at least in
part, are identical. Further, the remaining goods are
substantially similar to each other. In addition,
applicant’s services feature, among other things, coffee
and tea and, thus, we find applicant’s services to be
closely related to registrant’s goods.
The goods and services involve the same channels of
trade and would be purchased by the same classes of
purchasers. The goods and services are relatively
inexpensive, and would be the subject of impulse purchases.
Ser No. 74/475,672
6
In view thereof, the du Pont factors relating to the
goods and services weigh in favor of a finding of
likelihood of confusion.
That brings us to a consideration of the involved
marks. The dictionary definitions of record show “bean”
defined as “the edible nutritious seed of various species
of leguminous plants; any of various other beanlike seeds
or plants, as the coffee bean,” and “beanery” defined as a
slang term meaning “a cheap, usually inferior, restaurant.”
There is no question but that the word marks THE COFFEE
BEAN and THE COFFEE BEANERY LTD. share similarities in
sound and appearance. The marks, however, are different in
terms of meaning. While the overall commercial impression
engendered by applicant’s mark is obvious, registrant’s
mark conveys a somewhat different idea, that is, that
registrant’s coffee emanates from a corporate enterprise or
restaurant. This difference in meaning, coupled with the
clearly limited scope of protection of registrant’s marks,
plays a significant role in our analysis.
The only common feature shared by the marks is the
highly descriptive (if not generic) root term “coffee
bean.”6 We conclude that the mere presence of this common,
6 In saying this, we reiterate the difference in meaning between
the words “bean” and “beanery.”
Ser No. 74/475,672
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highly descriptive or generic portion in the marks is
insufficient here to support a finding of likelihood of
confusion, even though the marks are used in connection
with the same goods. See: In re Bed & Breakfast Registry,
791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); and Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976). Also, the addition of a design element in
registrant’s logo mark serves to further distinguish this
cited mark from applicant’s mark.
Turning our attention to another du Pont factor,
applicant claims that there has been no actual confusion
between applicant’s mark and registrant’s marks despite
over twenty years of contemporaneous use.7 Although the
record includes a few details about applicant’s use of its
7 In this connection, applicant has made reference to a
declaration of applicant’s president, Ms. Hyman, which was
submitted in connection with the prosecution of applicant’s
companion application Serial No. 74/474,894. Ms. Hyman
apparently attested to the effect that applicant is neither aware
of, nor has it encountered, any incidents of actual confusion
with registrant’s mark. Applicant’s prior application matured
into Registration No. 2,164,914, pursuant to Section 2(f), on
June 16, 1998. The registered mark is THE COFFEE BEAN & TEA LEAF
with pictorial representations of a coffee bean and a tea leaf
for goods and services essentially identical to the ones listed
in the present application. In the registration, applicant
claims ownership of Registration No. 994,791 for a pictorial
representation of a coffee bean and a design (the representation
of the coffee bean disclaimed). No oppositions were filed
against registration of those marks. The problem with according
any probative value to Ms. Hyman’s statement is that no such
verified statement was properly made of record in the present
application, and each case must stand on its own evidence.
Moreover, the present application is for a different mark.
Ser No. 74/475,672
8
mark, the record is silent as to the extent of registrant’s
use. Thus, we are at a significant disadvantage to
ascertain, with any degree of accuracy, whether there have
been opportunities for confusion to have occurred.
Accordingly, this factor has not entered into our analysis.
Decision: The refusals to register are reversed.