iVibe Coffee, Inc.

Trademark Trial and Appeal Board

Dec 17, 2014

No. 86137545 (T.T.A.B. Dec. 17, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: December 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re iVibe Coffee, Inc.
________

Serial No. 86137545
_______

Scott T. Kannady of Brown & Kannady LLC for iVibe Coffee, Inc.

Paul C. Crowley, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Seeherman, Cataldo and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, iVibe Coffee, Inc., filed an application to register on the
Principal Register the mark shown below for, as amended, “coffee, coffee and
tea; coffee based beverages; coffee beverages with milk; coffee-based beverage
containing milk; coffee-based iced beverages; iced coffee; prepared coffee and
coffee-based beverages; roasted coffee beans,” in International Class 30:1

1 Application Serial No. 86137545 was filed on December 6, 2013 under Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b). “The mark consists of a stylized lower
case letter ‘i’ and a stylized capital letter ‘V.’” The application further recites services
in International Classes 35 and 43 that are not subject to the instant refusal to
register.
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USP
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he Tradem
of the Tra
IV MUG
ster for “co
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hen the r
econsidera
al commen
ur determ
ysis of all
rs set fort
Q 563 (CC
, 65 USP
ysis, two k
een the m

istration N
7545
ark Exam
demark A
, in standa
ffee; coffe
l Class 30
efusal was
tion. Whe
ced. Appli
ination of
of the pr
h in In re
PA 1973).
Q2d 1201
ey, thoug
arks and

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ining Att
ct on the g
rd charact
e beans; g
.2
made fina
n the requ
cant and t
Likelihoo
the issue
obative fa
E. I. du Po
See also I
(Fed. Cir
h not excl
the simila

issued on D
2

orney refu
round of
ers, previo
round coff
l, Applica
est for re
he Examin
d of Conf
of likeliho
cts in evi
nt de Nem
n re Majes
. 2003).
usive, con
rities betw
ecember 11

sed regist
likelihood
usly regis
ee beans;
nt appeale
considera
ing Attorn
usion
od of conf
dence that
ours & Co
tic Distilli
In any lik
sideration
een the g
, 2012.
ration un
of confusio
tered on th
roasted co
d and file
tion was d
ey filed m
usion is b
are relev
., 476 F.2
ng Co., In
elihood o
s are the
oods or se
der Sectio
n with th
e Principa
ffee beans
d a reques
enied, thi
ain briefs.
ased on a
ant to th
d 1357, 17
c., 315 F.3
f confusio
similaritie
rvices. Se
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l
,”
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e
7
d
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s
e
Serial No. 86137545

3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also In re Dixie Rest. Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The Goods and Their Trade Channels and Classes of Purchasers
We turn now to our consideration of the identified goods. In making our
determination under the second du Pont factor, we look to the goods as
identified in the involved application and cited registration. See Octocom
Sys., Inc. v. Houston Comp. Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the identification of
goods set forth in the application regardless of what the record may reveal as
to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”). See
also Paula Payne Products v. Johnson Publishing 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.”).
In this case, Applicant’s “coffee, coffee and tea; coffee based beverages;
coffee beverages with milk; coffee-based beverage containing milk; coffee-
based iced beverages; iced coffee; prepared coffee and coffee-based beverages;
roasted coffee beans” are, in part, identical to Registrant’s “coffee; coffee
beans; ground coffee beans; roasted coffee beans.” Based upon the respective
Serial No. 86137545

4
identifications of goods, both Applicant and Registrant provide “coffee” and
“roasted coffee beans” under their respective marks. As a result, there is no
need for us to consider whether Applicant’s and Registrant’s other coffee-
related goods are similar. In the context of our analysis under Section 2(d), it
is sufficient if likelihood of confusion is found with respect to use of the mark
on any item that comes within the description of goods in the application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); and Apple Computer v. TVNET.Net,
Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).3
Applicant argues that its goods move in distinct channels of trade and
that the Internet evidence proffered by the Examining Attorney does not
support his contention that Registrant’s goods move in the same trade
channels. Applicant contends that “the examining attorney has not presented
any actual evidence of Registrant’s business operations and is not entitled to
presume or expect the Trademark Trial and Appeal Board to presume that
the operations of others are proof of the manner in which Registrant operates
its business.”4 Applicant’s argument is unpersuasive. Rather, it is well-
established that when an applicant and registrant recite goods that are
identical, they must be presumed to travel in the same channels of trade and

3 We observe nonetheless that the Examining Attorney submitted evidence in the
form of screenshots from Internet webpages and copies of third-party registrations
to buttress his argument that these goods are closely related and may emanate from
a common source.
4 Applicant’s brief, p. 8.
Seria

be so
Pres
Max
this
evide
T
facto
W
and
when
and
Clicq
(Fed
is no
side
term
l No. 8613
ld to the s
s, Inc., 281
Capital G
presumpti
nce that t
he identit
rs that we
The Mar
e turn the
the mark
viewed i
overall co
uot Ponsa
. Cir. 2005
t whether
compariso
s of their
7545
ame classe
F.3d 1261
roup Ltd.
on, it is u
he trade ch
y of the g
igh heavily
ks
n to the fi
in the cit
n their en
mmercial
rdin Maiso
). We note
the mark
n, but rat
overall com
s of consu
, 1268, 62
, 93 USPQ
nnecessar
annels for
oods, trad
in favor o
rst du Pon
ed registra
tireties in
impressio
n Fondee
initially t
s can be d
her wheth
mercial i
5
mers. See
USPQ2d
2d 1243,
y for the
such good
e channels
f a finding
t factor, i.e
tion, IV M
terms of
n. See Pa
En 1772, 3
hat the tes
istinguish
er the m
mpression
Hewlett-Pa
1001 (Fed
1245 (TTA
Examinin
s are relat
and class
of likeliho
., whether

UG, are
appearanc
lm Bay Im
96 F.3d 1
t under th
ed when s
arks are s
that confu
ckard Co.
. Cir. 2002
B 2010).
g Attorney
ed.
es of pur
od of conf
Applicant
similar or
e, sound,
ports, In
369, 73 US
e first du
ubjected t
ufficiently
sion as to
v. Packar
); and In r
Because o
to submi
chasers ar
usion.
’s mark,
dissimila
connotatio
c. v. Veuv
PQ2d 168
Pont facto
o a side-by
similar i
the sourc
d
e
f
t
e
r
n
e
9
r
-
n
e
Serial No. 86137545

6
of the goods or services offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We note in addition that, “[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines.” See Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Div. of
E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443
(TTAB 1980).
In this case, Applicant’s mark consists of the term IV in stylized script.
Registrant’s mark consists of the wording IV MUG in standard characters.
The marks are similar in sound to the extent that the sole word in
Applicant’s mark, “IV,” is the first word in Registrant’s mark. Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”). See also Century 21 Real Estate Corp. v.
Century Life of America, 23 USPQ2d at 1700 (upon encountering the marks,
consumers must first notice the identical lead word). As to appearance, the
stylized form of the lettering IV in Applicant’s mark is not sufficient to
distinguish it from the IV portion of the cited registered mark, because the
Serial No. 86137545

7
cited mark is in standard character form and is not limited to any particular
font, size, style, color, or other graphic presentation. In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010). Thus, we must consider
that Registrant might display its mark with a lower-case letter “i” and an
upper-case letter “V.”
With regard to the term shared by the marks, IV, we note that, whatever
meaning it is intended to convey, it could be interpreted by consumers as
having the same meaning in both marks.5 During prosecution, the Examining
Attorney made of record the following definition of “MUG” – “a large drinking
cup with a handle” and “the liquid that is contained in a mug.”6 Thus, the
term MUG, being strongly suggestive of coffee, has limited capacity to
distinguish Registrant’s mark from Applicant’s mark, as Applicant’s goods,
like those of Registrant, may be served in a mug. Accordingly, despite the
additional word MUG in Registrant’s mark, we find that the marks are
similar in connotation and commercial impression. As used in connection
with Applicant’s and Registrant’s in-part identical goods, consumers may
view the marks as variants of one another, pointing to a common source.
We recognize the obvious differences between the marks. However, for the
reasons discussed above, we find that the difference in appearance is not

5 We find it unnecessary to rely on the dictionary definition submitted by the
Examining Attorney with his brief in our determination herein. Accordingly, his
request to take judicial notice of such definition is moot and his arguments based
thereupon have not been considered.
6 Examining Attorney’s May 23, 2014 denial of Applicant’s request for
reconsideration. The definition also was retrieved from Merriam-
webster.com/dictionary.
Serial No. 86137545

8
sufficient to distinguish them. We also find that the difference in sound is
outweighed by the similarity between Applicant’s stylized “IV” mark and
Registrant’s IV MUG mark. As discussed above, when Applicant’s mark and
the cited mark are viewed in their entireties, we find their similarities in
sound, connotation and commercial impression outweigh the difference in
appearance.
Applicant argues that its mark “is a logo representing the full name of its
business – iVibe Coffee, Inc. – and is used as such in Applicant’s marketing
materials.”7 However, in making our determination regarding the similarity
of the marks, we must consider the marks as they appear in the involved
application and cited registration. Applicant cites to no authority for its
apparent position that we must consider extrinsic marketing materials or
trade names that are not a part of the mark at issue.
Applicant further argues without any evidence that “Registrant’s mark is
not strong and there is very little to no public recognition of the mark known
to Applicant.”8 Simply put, without any supporting evidence, we can give no
weight to Applicant’s mere assertion that the mark in the cited registration is
weak and entitled to a narrow scope of protection. We observe in addition
that it is not necessary for the Examining Attorney to demonstrate that a
cited mark possesses any degree of public recognition for purposes of an ex

7 Applicant’s brief, p. 5.
8 Id.
Serial No. 86137545

9
parte determination of a refusal to register under Section 2(d), only that the
cited mark be registered.
As a result of the similarities between the marks in sound, connotation
and commercial impression, this du Pont factor further favors a finding of
likelihood of confusion.
Actual Confusion
Another du Pont factor discussed by Applicant and the Examining
Attorney is the lack of instances of actual confusion. The involved application
is based on Applicant’s bona fide intent to use the mark in commerce.
Nonetheless, Applicant has submitted evidence that it is using its mark in
connection with the identified goods. Applicant asserts that “the examining
attorney has not been able to prove any actual confusion, and the Applicant
asserts that, in fact, there is an absence of any actual confusion.”9
However, as pointed out by the Examining Attorney, it is not necessary to
show actual confusion in order to establish likelihood of confusion. See Weiss
Assoc. Inc. v. HRL Assoc. Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Particularly in an ex parte proceeding, where we have no evidence
regarding the extent or manner of use of Registrant’s mark (nor any other
input from Registrant), Applicant’s assertion of the absence of actual
confusion is of little probative value in our determination on the issue of
likelihood of confusion because the Board cannot readily determine whether

9 Id. at 9.
Serial No. 86137545

10
there has been a significant opportunity for actual confusion to have
occurred, such that the absence of confusion is meaningful. See In re Opus
One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223
USPQ 1025, 1026 (TTAB 1984). As our principal reviewing court said in In re
Majestic Distilling Co., 65 USPQ2d at 1205:
With regard to the seventh DuPont factor, we agree with the
Board that Majestic’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary value. See
In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528,
(CCPA 1973) (stating that self-serving testimony of appellant’s
corporate president's unawareness of instances of actual
confusion was not conclusive that actual confusion did not exist
or that there was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not conclusive,
of a high likelihood of confusion. The opposite is not true,
however. The lack of evidence of actual confusion carries little
weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964,
(CCPA 1965), especially in an ex parte context.

Consumer Sophistication
Finally, Applicant urges us to consider consumer sophistication. There is
nothing in the record that evidences any particular sophistication of the
consumers of the relevant goods, which consist of coffee, tea, and coffee-based
products, i.e., items that may be purchased by the general public. To the
extent we accept that some of the purchasers of these products exercise
greater care than other consumers of these general consumer products, even
a careful consumer of these in-part identical goods is not likely to note the
differences in the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-
949 (Fed. Cir. 2000). Furthermore, even if purchasers were to notice the
Serial No. 86137545

11
difference in the marks, they are not likely to ascribe it to differences in the
source of the goods, but will see the marks as variations of each other,
pointing to a single source. Accordingly, we deem this du Pont factor also to
favor a finding of likelihood of confusion.
Balancing the Factors
Neither Applicant nor the Examining Attorney has discussed any of the
remaining du Pont factors. We note, nonetheless, that none seems to be
applicable, inasmuch as we have no evidence with respect to them.
We find that particularly in light of the in-part identical nature of the
goods, their trade channels and purchasers, and the similarities between the
marks, a likelihood of confusion exists between the mark and goods identified
the involved application and the mark and goods in the cited registration. It
is well established that one who adopts a mark similar to the mark of another
for the same or closely related goods or services does so at his own peril. See J
& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed Cir. 1988); and W.R. Grace & Co. v. Herbert J. Meyer Indust., Inc.,
190 USPQ 308 (TTAB 1976).
Decision: The refusal to register under Section 2(d) of the Trademark Act
is affirmed as to the goods identified in International Class 30.
Application Serial No. 86137545 will proceed to publication as to the
services recited in International Classes 35 and 43.