Marisol, Inc.

Trademark Trial and Appeal Board

Aug 28, 2008

No. 76600373 (T.T.A.B. Aug. 28, 2008)

Mailed:
August 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marisol, LLC
________

Serial No. 76600373
_______

John Joseph Hall for Marisol, LLC

Kelly Boulton, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney)
_______

Before Seeherman, Quinn and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Marisol, LLC has appealed from the final refusal of
the Trademark Examining Attorney to register DON THE
BEACHCOMBER in standard character form as a trademark for
“non-alcoholic cocktail mixes having extracts of natural
and artificial beverage flavorings.”1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15

1 Application Serial No. 76600373, filed June 30, 2004, based on
Section 1(b) of the Trademark Act (intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76600373
2
U.S.C. §1052(d), on the ground that applicant’s mark, if
used for its identified goods, so resembles the mark
BEACHCOMBER, previously registered for “alcoholic
beverages, namely flavored rum,”2 as to be likely to cause
confusion or mistake or to deceive.
After briefing in this appeal was completed, the Board
suspended proceedings in view of an appeal that had been
filed with the Court of Appeals for the Federal Circuit in
a companion case, the outcome of which could have a bearing
on the present appeal. The companion application, Serial
No. 76600374, involved the identical mark as in the current
appeal, but the goods were identified as “alcoholic
beverages, namely rum.” Registration of that application
had been refused on the same ground, namely, that
applicant’s mark DON THE BEACHCOMBER for rum was likely to
cause confusion with BEACHCOMBER for flavored rum, and the
Board affirmed the refusal of registration in a decision
mailed on August 27, 2007.
The Court issued a decision in the appeal for
Application Serial No. 76600374 on June 20, 2008, in which
the Court affirmed the Board’s decision per curiam. The
Board thereupon contacted applicant to see whether it
wanted to proceed with the present appeal. Applicant

2 Registration No. 2882674, issued September 7, 2004.
Ser No. 76600373
3
informed the Board by telephone that it still wished to
pursue the appeal, but it withdrew its request for an oral
hearing.
In view thereof, we turn to the issue in the present
appeal, which is likelihood of confusion. Because many of
the arguments made by applicant and the Examining Attorney
are the same as in the appeal of the refusal of the
companion application, we will quote at length from the
Board’s August 27, 2007 opinion.
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
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).
Much of applicant’s brief focuses on the first du Pont
factor, the similarity or dissimiliarty of the marks. The
cited mark is BEACHCOMBER; applicant’s mark includes this
word, and adds to it the words DON THE. The result is that
the word BEACHCOMBER, in appearance, pronunciation and
meaning, remains as a clear element in applicant’s mark.
Applicant’s mark merely provides some more specific
Ser No. 76600373
4
information; rather than referring to any BEACHCOMBER, it
identifies a specific BEACHCOMBER named DON.3
Applicant has strenuously argued that the dominant
part of its mark is DON, and therefore the presence of this
term is sufficient to distinguish DON THE BEACHCOMBER from
BEACHCOMBER, while the Examining Attorney has asserted that
BEACHCOMBER is the dominant part of the mark. In support
of its position applicant has cited a number of cases in
which the Board and the courts have said that the first
word in a mark is often entitled to greater weight. We do
not disagree with the holdings in these cases, but we point
out that it is not a rule that the initial word in a mark
must be given greater weight. Nor do these cases stand for
the principle that, if the first words of marks are
different, the marks cannot be confusingly similar.

3 Applicant has pointed out that there are various definitions
of the word “don,” i.e., it is “used as a courtesy title before
the name of a man in a Spanish-speaking area”; there are two
“chiefly British” meanings, “a head, tutor, or fellow at a
college of Oxford or Cambridge,” and “a college or university
professor”; and it is defined as “the leader of a organized-crime
family.” The American Heritage Dictionary of the English
Language, 4th ed. © 2000. We are not persuaded that consumers
would view the word “don” in applicant’s mark as having any of
these meanings. It is not followed by a name, and therefore
would not be regarded as a Spanish courtesy title; and it is
unclear to what extent consumers in the United States would be
aware of the “chiefly British” meanings. In any event, college
heads or professors and organized crime leaders are not normally
thought of as beachcombers. The only likely connotation of “don”
as used in applicant’s mark is that of a person’s first name.
Ser No. 76600373
5
With respect to the mark DON THE BEACHCOMBER, we find
that the word DON is not entitled to greater weight than
BEACHCOMBER, since BEACHCOMBER is so intrinsically related
to DON as an identifier of who DON is. We also disagree
with applicant’s claim that “the cadence of a person saying
DON THE BEACHCOMBER naturally emphasizes DON and not
BEACHCOMBER, since saying BEACHCOMBER after DON THE
produces a falling inflection naturally of a person’s
voice.” Brief, p. 10. Both DON and the syllable “BEACH”
in BEACHCOMBER have an equal emphasis, and the additional
three-syllable word BEACHCOMBER in applicant’s mark is at
least as aurally significant as the word DON. On the other
hand, we do not agree with the Examining Attorney’s
position that BEACHCOMBER is the dominant part of
applicant’s mark. The impression created by applicant’s
mark is the phrase DON THE BEACHCOMBER, and both the name
DON and the word BEACHCOMBER must be given weight in our
consideration of the mark.
In comparing the marks in their entireties, we must
take note of the fact that applicant has appropriated the
registrant’s mark in its entirety. As the Examining
Attorney has pointed out, “the mere addition of a term to a
registered mark does not obviate the similarity between the
marks nor does it overcome a likelihood of confusion under
Ser No. 76600373
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Section 2(d).” Brief, p. 4. We agree with the Examining
Attorney that there is a line of cases holding that the
addition of other matter, such as a house mark, primary
mark or other material, to one of two otherwise similar
marks, is not sufficient to distinguish the marks as a
whole. See, generally, First International Services Corp.
v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988); In re Champion
Oil Company, 1 USPQ2d 1920 (TTAB 1986); In re Christian
Dior, S.A., 225 USPQ 533 (TTAB 1985); and In re C. F.
Hathaway Company, 190 USPQ 343 (TTAB 1976). As the Court
stated in Coca-Cola Bottling Company of Memphis, Tennessee,
Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975), “When one incorporates the
entire arbitrary registered mark of another into a
composite mark, inclusion in the composite mark of a
significant nonsuggestive element does not necessarily
preclude the marks from being so similar as to cause a
likelihood of confusion.”
There are exceptions to this principle, and additional
matter has been found sufficient to distinguish the marks
under circumstances where:
(1) there are recognizable differences
in the common term. See, for example,
Rockwood Chocolate Co., Inc. v. Hoffman
Candy Co., 372 F.2d 552, 152 USPQ 599
(CCPA 1967) (ROCKWOOD BAG-O-GOLD for
Ser No. 76600373
7
candy not confusingly similar to CUP-O-
GOLD for candy); or

(2) the appropriated matter is highly
suggestive or merely descriptive or has
been frequently used or registered by
others in the field for the same or
related goods or services. See In re
Merchandising Motivation, Inc., 184
USPQ 364 (TTAB 1974) (MEN'S WEAR for a
semi-monthly magazine not confusingly
similar to MMI MENSWEAR for fashion
consulting for men because “MENSWEAR”
is merely descriptive of such
services); or

(3) the marks in their entireties
convey significantly different meanings
or commercial impressions; or

(4) the incorporated matter has been so
merged with the other matter that it
“loses its separate identity.” See
Castle & Cooke, Inc. v. Oulevay, S. A.,
370 F.2d 359, 152 USPQ 115 (CCPA 1967)
(FARENDOLE not confusingly similar to
DOLE for related food products because
DOLE is so merged into FARANDOLE that
it loses its individual identity
therein).

Applicant’s mark, however, does not fall under any of
these exceptions. The word BEACHCOMBER is identical in
both marks, and it retains its identity as it is used in
applicant’s mark. Further, BEACHCOMBER is an arbitrary
term for rum and for cocktail mixes. There is no evidence
of third-party registrations or third-party use of marks
comprising or containing this term. Nor does applicant’s
mark convey a significantly different meaning or commercial
Ser No. 76600373
8
impression from the registered mark. Applicant cites
Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
1400, 167 USPQ 529 (CCPA 1970), in which no likelihood of
confusion was found between the marks PEAK for dentifrice
and PEAK PERIOD for personal deodorant, despite the fact
that PEAK PERIOD incorporates PEAK in its entirety.
However, the word PEAK per se has the meaning of the top of
a hill or mountain, the brim of a cap, a jut of land and a
high point in the course of development, while PEAK PERIOD
has a different meaning: reaching the high point or
maximum of an activity during a specified portion of time.
For the same reason, applicant’s citation of Lever Brothers
Company v. The Barcolene Company, 463 F.2d 1107, 174 USPQ
392 (CCPA 1972), is inapposite. In that case, the mark ALL
CLEAR! was found not confusingly similar to ALL because it
was a play on an expression popularized in connection with
air raid drills, and this meaning is different from the
meaning of the word ALL.
In comparing the marks in their entireties, we find
that the similarities between the marks far outweigh the
dissimilarities. Because BEACHCOMBER is an arbitrary word
for cocktail mixes, the word BEACHCOMBER in applicant’s
mark stands out. Further, the initial words DON THE in
applicant’s mark modifies BEACHCOMBER, in effect telling
Ser No. 76600373
9
which BEACHCOMBER he is, and therefore emphasizes the
BEACHCOMBER portion. Because the marks share the word
BEACHCOMBER, which is the only element in the registered
mark and is a clearly recognizable and prominent element in
applicant’s mark, we find that there are strong
similarities between the marks in terms of appearance,
sound, meaning and commercial impression.
Applicant has relied on a letter from the beverage
manager of Southern Wine and Spirits of Nevada,4 in which he
gives his opinion that “the word DON is the first word and
is what gives the entire DON THE BEACHCOMBER mark
importance and meaning and distinguishes it from
BEACHCOMBER.” This opinion is based on the labels shown in
photographs of applicant’s bottles, and labels for
registrant’s products that applicant downloaded from the
Internet. However, in the labels for its product applicant
emphasizes the DON portion of the mark and, in fact, the
exhibit photograph submitted with the letter and
declaration does not even show the word BEACHCOMBER on the
bottles; on one bottle, only the word DON is shown; on a

4 Applicant also submitted the declaration of its business
manager, which merely serves to authenticate the letter from the
Southern Wine and Spirits beverage manager.

Ser No. 76600373
10
second bottle one can see only a “B”; while on the third
bottle one can make out only THE and BEA.”
We give the letter from the beverage manager very
limited probative value, since his opinion is based on
specific labels (not to mention photographs in which the
entire mark cannot even be seen). Applicant has applied
for the mark DON THE BEACHCOMBER in standard character
format, not for the particular manner in which the mark is
shown on the labels in the exhibits. If applicant were to
obtain a registration for this mark, it would give
applicant protection to use the mark without limitation as
to a particular stylized format. Thus, applicant could
depict the mark with the words THE BEACHCOMBER in the same
size and typestyle as the word DON, or even in a larger
size, similar to the way it has depicted the word DON in
larger size on the labels shown to the beverage manager.
Citing Long John Silver’s Inc. v. Lou Scharf
Incorporated, 213, USPQ 263 (TTAB 1982), applicant has
argued that the marks must be compared using a “subjective
eyeball” test, in which it is appropriate to do a side-by-
side comparison of the applicant’s and registrant’s labels,
as was done by the beverage manager. We do not read this
decision, which involves design marks, as stating that a
side-by-side comparison is the appropriate test for
Ser No. 76600373
11
comparing the word marks at issue, or that similarity of
marks should be based on trade dress or other elements that
are not part of the applied-for and registered marks.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
With respect to the fifth and sixth du Pont factors,
as we previously stated, there is no evidence of record of
third-party registrations or third-party uses of
BEACHCOMBER marks. Although there is no evidence of fame
of the registrant’s mark, BEACHCOMBER is an arbitrary mark
for rum, and therefore the registration must be accorded a
broader scope of protection than would be the case if it
were a suggestive mark.
We turn now to a consideration of the goods. We start
our analysis with reiterating the well-established
principle that it is not necessary that the goods or
services of applicant and the registrant be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods or services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
Ser No. 76600373
12
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Here, the Examining Attorney has made of record third-
party webpages that advertise both cocktail mixes and
alcoholic beverages from the same party under the same
mark. For example, www.bacardi.com lists BACARDI Mixers as
coming in the flavors strawberry daiquiri, pina colada and
rum runner, and says that they “can be found where you buy
BACARDI Rum, and in most grocery stores.” The Jimmy
Buffett’s Margaritaville website, www.margaritaville.com,
displays MARAGARITAVILLE margarita mix and MARAGARITAVILLE
Flavored Tequila, and the website www.diageobrands.com
shows JOSE CUEVO tequila and JOSE CUERVO margarita mix,
while another website shows a recipe for the SKYY Cosmo as
containing SKYY vodka and SKYY cosmo mix, and has a link to
buy the cosmo mix.
The Examining Attorney has also submitted numerous
third-party registrations showing that parties have
registered a single mark for both distilled spirits (which
includes rum) and beverages used as mixers for cocktails.
See, for example, Registration No. 2595289 for TTL for,
inter alia, rum and fruit juices and soda water;
Registration No. 2764973 for FORNI & FATTORI for, inter
alia, rum and soft drinks, fruit juices and mineral and
Ser No. 76600373
13
aerated water; Registration No. 2653809 for T.J. TOAD for,
inter alia, distilled spirits and non-alcoholic cocktail
mixes and non-alcoholic punch; Reg. No. 2304424 for BIOLUME
for, inter alia, distilled sprits and prepared alcoholic
cocktails and non-alcoholic punch and carbonated and non-
carbonated soft drinks; and Registration No. 2361694 for,
inter alia, distilled spirits and fruit drinks and fruit
juices. Third-party registrations which individually cover
a number of different items and which are based on use in
commerce serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).5
Even without this evidence, it is clear that non-
alcoholic cocktail mixes and flavored rum are related
products because of their complementary nature. That is,
cocktail mixes can be used with rum to make various
cocktails. The Board and the courts have held in many
cases that alcoholic beverages and non-alcoholic beverages
that can be used with alcoholic beverages are related. As

5 We have given no consideration to the third-party
registrations submitted with the first Office action, mailed
February 7, 2005. Not one of the numerous registrations attached
to that Office action was based on use in commerce. Nor have we
considered Registration No. 2942238, which was submitted with the
second Office action, because this registration, too, was not
based on use in commerce.
Ser No. 76600373
14
the Board stated in In re Rola Weinbrennerei und
Likorfabrik GmbH & Co. KG, 223 USPQ 57, 58 (TTAB 1984):
Decisions of this Board and its
reviewing courts have made clear that,
in appropriate factual contexts,
alcoholic beverages and non-alcoholic
beverages or non-alcoholic drink mixes
may be so related as to be likely to
generate confusion when similar marks
are used thereon. See Coca Cola
Bottling Co. of Memphis, Tennessee, v.
Joseph E. Seagram & Sons, Inc., 188
USPQ 105 , 526 F.2d 556 (CCPA 1975)
(BENGAL for gin and BENGAL LANCER for
non-alcoholic carbonated soft drinks);
Pink Lady Corp. v. L.N. Renault & Sons,
Inc., 121 USPQ 465 , 265 F.2d 951 (CCPA
1959) (PINK LADY with women's picture
for wines and PINK LADY for citrus
fruit juices); In re Jakob Demmer, KG,
219 USPQ 1199 (TTAB 1983) (GOLDEN
HARVEST with design for wines and
GOLDEN HARVEST stylized for non-
alcoholic apple cider); In re Daily
Juice Products, Inc., 163 USPQ 658
(TTAB 1969) (ready made cocktails and
non-alcoholic cocktail mix considered
related goods but registration allowed
based on dissimilarity of COCKTAIL HOUR
and DAILY'S COCKTAIL TIME).

Applicant does not really dispute that cocktail mixes
and rum are related products. Instead, applicant contends
that the owner of the cited registration does not use the
mark BEACHCOMBER for “non-alcoholic cocktail mixes or
prepared cocktails or related goods.” Reply brief, p. 8.
According to applicant, “there is no probative evidence
relating applicant’s non-alcoholic cocktail mixes to the
Ser No. 76600373
15
BEACHCOMBER rum goods because the BEACHCOMBER registrant
does not provide cocktail mixes of any kind under the mark
BEACHCOMBER.” Reply brief, p 9. Applicant further states
that the evidence that the registrant uses a different mark
for its non-alcoholic cocktail mixes “establishes that
applicant’s non-alcoholic cocktail mixes and the rum goods
of the cited BEACHCOMBER registration do NOT emanate from
one source under the mark BEACHCOMBER.” Id., emphasis in
original.
Applicant’s argument misses the point. The question
is not whether the registrant in fact sells non-alcoholic
cocktail mixes under the mark BEACHCOMBER. The question is
whether consumers who are familiar with the registrant’s
flavored rum sold under the mark BEACHCOMBER, upon
encountering non-alcoholic cocktail mixes under a mark that
is confusingly similar to BEACHCOMBER, in this case DON THE
BEACHCOMBER, will believe that both the non-alcoholic
cocktail mixes and the flavored rum emanate from a single
source. For the reasons discussed above, in particular,
the complementary nature of the goods, we find that they
will.
In addition, both cocktail mixes and rum are products
that can be sold in liquor stores, where they will be
purchased by adult members of the general public and used
Ser No. 76600373
16
for the same purpose—to make rum cocktails. Such consumers
would include those who are not particularly sophisticated
or knowledgeable about rum or cocktail mixes. In our
analysis, we must consider all potential customers,
including the less sophisticated. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 765 (TTAB 1986) (average ordinary wine
consumer must be looked at in considering source
confusion).
The du Pont factors of the relatedness of the goods,
channels of trade and conditions of sale favor a finding of
likelihood of confusion.
The Examining Attorney has also addressed the fact
that there is no evidence of actual confusion. We agree
with the Examining Attorney that the absence of such
evidence is not sufficient for us to find that there is no
likelihood of confusion. As the Examining Attorney has
pointed out, applicant’s application is based on an
intention to use the mark, rather than use, and to the
extent that applicant may have begun using its mark, there
is no evidence of the length or extent of such use. Thus,
we cannot ascertain whether there has been an opportunity
for confusion to occur if it were likely to occur. See In
re Majestic Distilling Co., supra, 65 USPQ2d at 1205 (“The
Ser No. 76600373
17
lack of evidence of actual confusion carries little
weight”). This du Pont factor is neutral.
Applicant and the Examining Attorney have limited
their arguments to the above du Pont factors. Because of
this, and because no evidence has been submitted on other
factors, we, too, have limited our discussion to these
factors. To the extent that any other factors are
applicable, we must treat them as neutral.
Finally, we note that applicant has stated that,
because the Examining Attorney did not specifically discuss
cases that applicant cited in its brief, the holdings in
those cases should control on the issue of likelihood of
confusion in the present case. However, there is no
requirement that an Examining Attorney discuss every case
that an applicant cites, nor will the Board regard the lack
of such discussion as an acknowledgement by the Examining
Attorney that those cases should control the result in the
present case. To do otherwise would place an intolerable
burden on the Examining Attorney. Moreover, the fact that
we, too, have chosen not to address in this opinion each
case cited by applicant in its 22-page appeal brief and 18-
page reply brief does not mean that we agree with applicant
that such cases are controlling herein. We have chosen not
to burden this opinion with a discussion of each case, or
Ser No. 76600373
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an explanation as to why we find each to be
distinguishable. Just as an example, applicant has relied
on In re Daily Juice Products, Inc., 163 USPQ 658 (TTAB
1969), in which the Board found no likelihood of confusion
between DAILY’S COCKTAIL TIME for non-alcoholic cocktail
mix and COCKTAIL HOUR for ready-made cocktails. Although
the Board stated, at p. 659, that “if products of this
character were to be sold under the same or similar marks,
purchasers would be likely to attribute them to the same,
albeit anonymous, source,” it did not find likelihood of
confusion because the registered mark was highly
suggestive. As opposed to that case, where the only word
common to both marks was the descriptive and disclaimed
word COCKTAIL, in the present case the common element,
BEACHCOMBER, is arbitrary and the cited mark, because it is
arbitrary, must be treated as a strong mark.
In addition, just as we have elected not to discuss and
distinguish each case cited by applicant, we have also
chosen not to discuss each statement made by applicant in
its brief with which we disagree. That, too, would unduly
burden this opinion. As an example of such a statement,
applicant says in its reply brief, at p. 6, that the Board
should disregard the Examining Attorney’s statement that
“BEACHCOMBER is the registrant’s full mark and by necessity
Ser No. 76600373
19
is the dominant portion of that mark.” Applicant contends
that:
This statement is total speculation and
pure conjecture without support by any
legal authority or probative evidence.
Further, applicant does not understand
how a trademark consisting of a single
word BEACHCOMBER can have that single
word be the dominant portion of the
trademark since the trademark has no
other word or term over which
BEACHCOMBER is to be dominant.

Moreover, the Examining Attorney’s
Brief fails to give any explanation of
how “necessity” is a legitimate basis
to determine which part of a mark is
dominant, let alone determine that the
single word of a single word mark is
dominant.

We belabor the obvious in saying that since BEACHCOMBER is,
as applicant recognizes, the only word in the cited
registration, there is no other part of the mark that could
be given greater weight, and therefore this single word “of
necessity” is the dominant—and only—part of the mark.
Suffice it to say that merely because we have not directly
taken issue with statements made in the briefs does not
mean that we agree with all of them.
In conclusion, we find that applicant’s mark DON THE
BEACHCOMBER for non-alcoholic cocktail mixes having
extracts of natural and artificial beverage flavorings is
Ser No. 76600373
20
likely to cause confusion with the registered mark
BEACHCOMBER for flavored rum.
Decision: The refusal of registration is affirmed.