Jaguar DrinkWare

Trademark Trial and Appeal Board

Dec 11, 2003

No. 78010982 (T.T.A.B. Dec. 11, 2003)

Mailed:
December 11, 2003
Paper No. 12
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jaguar DrinkWare
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Serial No. 78010982
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Mark J. Murphy of Cook Alex McFarron Manzo Cummings &
Mehler, Ltd. for Jaguar DrinkWare.
Caroline Fong Weimer, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Jaguar DrinkWare seeks registration on the Principal
Register for the mark JAGUAR DRINKWARE for goods
identified as “mugs, drinking steins, and drinking cups in
the nature of tumblers for coffee, fountain drinks and
other drinkable liquids, all being made of a variety of
materials except for precious metals, namely, porcelain,
stainless steel, plastic, acrylic and aluminum,” in
International Class 21.1
1 Application serial number 78010982 was filed on June 2,
2000 based upon applicant’s allegations of a bona fide intention
to use the mark in commerce. At the request of the Trademark
Examining Attorney, applicant agreed to disclaim the generic term
“Drinkware” apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78010982
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This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles three
marks owned by Jaguar Cars Limited, as follows:
registered for “coasters not of
paper and not being table linen,
mugs and automobile cleaning
cloths,” in International Class
212
registered for “drinking steins;
beverage glassware; thermal
insulated containers for
beverages; water bottles, sold
empty; portable coolers and
tankards not of precious metal,”
in International Class 213

JAGUAR RACING
registered for “drinking steins;
beverage glassware; drinking
mugs; thermal insulated
containers for beverages; water
bottles, sold empty; portable
coolers and tankards not of
precious metal,” in
International Class 214
2 Reg. No. 1645289 issued on May 21, 1991; Section 8
affidavit accepted and Section 15 affidavit acknowledged;
renewed.
3 Reg. No. 2175107 issued on July 21, 1998.
4 Reg. No. 2508053 issued on November 13, 2001.
Serial No. 78010982
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as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant argues that the marks are quite different
when compared in their entireties; that the United States
Patent and Trademark Office has registered numerous marks
having the word “jaguar” in the marks; that whatever fame
may attach to registrant’s mark for automobiles does not
carry over to these goods; and that despite contemporaneous
usage for years, applicant knows of no instances of actual
confusion.
In turn, the Trademark Examining Attorney contends
that the marks are confusingly similar because the word
“Jaguar” is dominant in all of the marks; that the goods
are identical in part and otherwise closely related; that
the third party registrations listed by applicant are of
minimal probative value; and that the legal test is
likelihood of confusion, not actual confusion.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
Serial No. 78010982
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confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
When considering the relatedness of the respective
goods, we look first to registrant’s goods as listed in the
identifications of goods in the cited registrations. These
include mugs, steins and beverage glasses in International
Class 21. These goods would appear to be identical to
applicant’s own mugs, drinking steins, and drinking cups.
Registrant’s other beverage containers are closely related
to applicant’s goods.
Moreover, turning to the du Pont factor dealing with
the similarity or dissimilarity of established, likely-to-
continue trade channels, given that neither registrant nor
applicant has placed any restrictions on their respective
channels of trade, we must presume that applicant’s goods
and registrant’s goods will move through all of the normal
channels of trade to all of the usual consumers of goods of
the type identified. See Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Serial No. 78010982
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Similarly, we should also note that as to the du Pont
factor focusing on the conditions under which and buyers to
whom sales are made, these goods are relatively inexpensive
products and would not be subjected to the careful scrutiny
that would accompany more expensive items.
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation. As our
principal reviewing court, the Court of Appeals for the
Federal Circuit, has pointed out, “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In summarizing her comparison of the
involved marks, the Trademark Examining Attorney argues
that these marks “all create the same commercial
impression.” (Trademark Examining Attorney’s appeal brief,
unnumbered page 4)
While we compare the marks in their entireties, the
Court of Appeals for the Federal Circuit has also held that
in articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
Serial No. 78010982
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less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987), and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
In this vein, the Trademark Examining Attorney argues
that inasmuch as the word “Drinkware” in applicant’s mark
is generic and hence disclaimed, one should accord little
weight to this term as distinguishing applicant’s mark from
the cited marks. Moreover, the image of the leaping jaguar
above the word “Jaguar” in two of the cited marks
reinforces the word portion of the marks rather than being
a separable, easily-verbalized part of these marks. Hence,
the identical word “Jaguar” is the same literal element
that would be used to call for all of these goods.
Finally, in the newest of the cited registrations, the word
“Racing” (like the leaping jaguar image) reinforces the
fact that registrant’s beverage containers are collateral
items for the well-known auto manufacturer of Jaguar
automobiles.5 This additional term, then, in no way
5 In its brief (p. 6), applicant concedes that the word
JAGUAR and the leaping jaguar image may be famous when associated
with automobiles.
Serial No. 78010982
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detracts from the overall commercial impression surrounding
the Jaguar brand.
As to the alleged weakness of the cited marks,
applicant argues that:
… the Trademark Office has already registered
trademarks for many other “jaguar” type marks to
others than Jaguar Cars Limited Corporation United
Kingdom, such as for example, “JAGUAR” (many),
“JAGUAR C 2000,” “JAGUAR CTS,” “VERTEL JAGUAR,”
“Jaguar” with different cat designs (even design
ones with a leaping Jaguar), and many others …,
and found no likelihood of confusion between these
marks and the cited marks. (footnote omitted)
Clearly, the cited marks are not strong marks.
(applicant’s appeal brief, p. 7) In support of its
position that there are “many other ‘jaguar’ type marks” on
the federal trademark register, applicant had attached to
its earlier response to an Office action copies of
printouts of these third-party registrations taken from the
United States Patent and Trademark Office’s computerized
database.
As was correctly noted by the Trademark Examining
Attorney, these registrations do not indicate actual use of
the marks in the marketplace by the respective registrants.
Nonetheless, when according these third-party registrations
the limited probative value to which they are entitled, we
cannot conclude that the cited marks are weak for these
mugs, steins, drinking glasses and other beverage
Serial No. 78010982
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containers. As noted by the Trademark Examining Attorney,
applicant’s argument about the alleged weakness of the
cited marks is not particularly persuasive “when other
cited marks are for goods or services with no commercial
relationship to Registrant’s goods.” (Trademark Examining
Attorney’s appeal brief, unnumbered page 6). Indeed,
applicant has pointed to registrations of a variety of
composite marks containing the word “Jaguar” (some of which
also include other prominent, arbitrary matter) that are
registered for goods quite different from registrant’s
goods, e.g., machine tools, industrial chemicals,
rodenticides, bailer twine, software for project
management, communications management and applications
management, medicated preparations, premium paper, cutlery,
hair brushes and combs.
As to the du Pont factor focusing on fame, other than
applicant’s limited concession that the word JAGUAR and the
leaping jaguar image may well be famous when associated
with automobiles, there is no evidence in this ex parte
record relating to the fame of the cited mark.
Accordingly, this factor favors neither the position taken
by the Trademark Examining Attorney nor that of applicant.
Finally, we turn to the length of time during and
conditions under which there has been contemporaneous use
Serial No. 78010982
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without evidence of actual confusion. Applicant argues
that in considering the du Pont factors in this case, we
should consider that registrant’s and applicant’s
respective goods have coexisted for two years (at the time
of applicant’s appeal brief) without any confusion.
However, there was only a single year of coexistence
of the marks at the time of the declaration signed by
applicant’s president. One year of use without any actual
confusion is an extremely short period of time on which to
base an argument that there is not a likelihood of
confusion, particularly when the record contains no
evidence that these respective marks have been used
contemporaneously on these respective beverage containers
in the same geographical area. It is therefore not at all
surprising that no instances of actual confusion have been
reported to applicant since 2001. The absence of any
instances of actual confusion can be a meaningful factor
only where the record indicates that, for a significant
period of time, an applicant’s sales and advertising
activities have been so appreciable and continuous that, if
confusion were likely to happen, any actual incidents
thereof would be expected to have occurred and would have
come to the attention of one or both of these trademark
owners. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
Serial No. 78010982
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1768, 1774 (TTAB 1992). Such evidence is not a part of
this record. Furthermore, we have not had opportunity to
hear from the registrant on this point. Moreover, as noted
by our principal reviewing court, the Court of Appeals for
the Federal Circuit:
With regard to the seventh du Pont 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, 529 (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, 144 USPQ 435, 438 (CCPA
1965), especially in an ex parte context.
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003). Therefore, applicant’s claim
that no instances of actual confusion have been brought to
its attention is not indicative of an absence of a
likelihood of confusion, and we find that this factor
favors neither the position taken by applicant nor that of
the Trademark Examining Attorney.
In conclusion, given that the goods herein are
identical in part and otherwise closely related, that they
Serial No. 78010982
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are inexpensive items that will presumably move through the
same channels of trade to the same classes of consumers,
that applicant’s mark creates the same overall commercial
impression as do the cited marks, and that this record does
not support the conclusion that the cited marks are weak as
applied to registrant’s listed goods, we conclude that
applicant’s mark, when used in connection with its
identified goods, so resembles the three registered marks
owned by Jaguar Cars Limited as to be likely to cause
confusion, to cause mistake or to deceive.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby affirmed.