Marisol, LLC

Trademark Trial and Appeal Board

Aug 27, 2007

No. 76600374 (T.T.A.B. Aug. 27, 2007)

Hearing: Mailed:
February 6, 2007 August 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marisol, LLC
________

Serial No. 76600374
_______

John Joseph Hall for Marisol, LLC

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

Before Seeherman, Bucher 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
“alcoholic beverages, namely, rum.”1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, if

1 Application Serial No. 76600374, 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. 76600374
2
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.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.
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).
Turning first to the goods, applicant’s goods are
identified as rum, while the cited registration is for
flavored rum. Applicant’s goods, thus, encompass the goods
identified in the registration, and they must be considered
legally identical to the registrant’s goods. As such, they
must be deemed to be sold in the same channels of trade to
the same classes of customers, which would include adult
members of the general public. Such consumers would
include those who are not particularly sophisticated or

2 Registration No. 2882674, issued September 7, 2004.
Ser No. 76600374
3
knowledgeable about rum. 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).
Accordingly, the du Pont factors of the similarity of
goods, trade channels and conditions of sale favor a
finding of likelihood of confusion.
With respect to the fifth and sixth du Pont factors,
there is no evidence of fame of the registrant’s mark.
However, 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. Further, there is no evidence of third-
party use of BEACHCOMBER marks.
The only du Pont factor that applicant has discussed
in its brief is the first factor, the similarity or
dissimiliarty of the marks. It appears that applicant has
conceded that the remaining du Pont factors on which there
is evidence favor a finding of likelihood of confusion, or
are neutral. However, applicant relies on the fact that
one du Pont factor, and specifically the factor of the
dissimilarity of the marks, can be sufficient to find no
likelihood of confusion. See Champagne Louis Roederer,
Ser No. 76600374
4
S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459
Fed. Cir. 1998).
Thus, we turn to a consideration 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
information; rather than referring to any BEACHCOMBER, it
identifies a specific BEACHCOMBER named DON.3 We 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. 9. Rather, both DON and the syllable
“BEACH” in BEACHCOMBER have an equal emphasis, and the

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. 76600374
5
additional three-syllable word BEACHCOMBER in applicant’s
mark is at least as significant as the word DON.
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.
Applicant has also made of record 48 identical signed
statements of bar customers at its licensee’s DON THE
BEACHCOMBER restaurant and bar, dated between May 11 and
May 19, 2005.4 The statements read as follows:
My name is BLANK, and I live at BLANK.

On occasion I visit the restaurant and
bar known as DON THE BEACHCOMBER in Las
Vegas to get a drink or something to
eat. I always refer to this restaurant
as DON THE BEACHCOMBER, and never just
the BEACHCOMBER because I am impressed
with the word DON more than
BEACHCOMBER.

When I think of the word DON THE
BEACHCOMBER, I always emphasize the
word DON, not BEACHCOMBER, because it
is the first word and has more meaning

4 We refer to these submissions as statements, rather than
declarations, because they are not sworn to, nor do they bear a
verification in accordance with Trademark Rule 2.20.
Ser No. 76600374
6
to me than BEACHCOMBER alone. The word
BEACHCOMBER alone does not give me the
same impression as DON THE BEACHCOMBER.

Further, on seeing the mark DON THE
BEACHCOMBER (Exhibit 1), used by them
for rum products and the mark
BEACHCOMBER (Exhibit 2), I have no
problem of confusion between the two
marks since they are so different in
appearance, sound, commercial
impression and meaning, even though
both marks are for rum products.

(Exhibit 1 consists of four identical photographs of labels
for DON THE BEACHCOMBER dark rum; Exhibit 2 consists of
four labels for what applicant’s manager has testified to
be the registrant’s BEACHCOMBER labels, one for each of its
flavored rums, which applicant’s manager downloaded from
the registrant’s website.)
In addition, applicant made of record five statements,
signed between June 29 and July 2, 2005, also of customers
of its licensee’s bar. These statements relate to an
exhibit consisting of a photograph of a bar display of
various liquor bottles, including both applicant’s and the
registrant’s rum bottles placed side-by-side. In his
declaration, applicant’s manager testified that applicant
prepared a case of rum bearing DON THE BEACHCOMBER labels
and sold it on June 15, 2005 to its Las Vegas licensee, and
also gave two bottles of the registrant’s BEACHCOMBER rum
to the licensee. One of each bottle was then put into the
Ser No. 76600374
7
bar display that was photographed and referenced in the
five identical customer statements, the text of which
follows:
On occasion, I visit the restaurant and
bar known as DON THE BEACHCOMBER in Las
Vegas, Nevada, to get a snack and a
drink. Sometimes the drink is a rum
drink.

I always refer to this restaurant and
bar as DON THE BEACHCOMBER, and never
as the BEACHCOMBER restaurant and bar
because I am impressed with the word
DON more than BEACHCOMBER alone.

When I think of the word DON, it brings
to my mind the entire name DON THE
BEACHCOMBER for this restaurant and
bar.

When I say the words DON THE
BEACHCOMBER, I always emphasize the
word DON, not BEACHCOMBER, because it
is the first word and has more meaning
to me than BEACHCOMBER and names a
particular person, DON THE BEACHCOMBER.

The word BEACHCOMBER alone does not
give me the same impression as DON THE
BEACHCOMBER.

I have noticed that the DON THE
BEACHCOMBER restaurant and bar has two
different bottles of rum side by side
for rum drinks; one bottle has a label
of the word DON THE BEACHCOMBER and the
other bottle has a label of the word
BEACHCOMBER as shown by attached
Exhibit 1.

When I look at both bottles together, I
am not confused because the DON THE
BEACHCOMBER label is so different in
appearance, sound and meaning from
Ser No. 76600374
8
BEACHCOMBER alone that I am sure the
source for each one is different.

We are not persuaded by applicant’s arguments or its
evidence that DON or DON THE is the dominant part of its
mark. With respect to the customer statements, applicant
has provided no citation to any cases that state that such
form statements can be used to prove that a particular part
of a mark is deserving of greater weight in the likelihood
of confusion analysis, or that they may be used to show
consumer perception regarding whether marks are confusingly
similar. Applicant simply contends that the statements
should be viewed as analogous to the declarations that are
submitted to prove acquired distinctiveness. However,
there is a clear distinction between declarations showing
that individuals are familiar with and regard a term as a
trademark, and statements which purport to show what part
of a mark an individual considers to be “dominant,” or
whether marks are confusingly similar.
Moreover, even in those cases in which form
declarations have been used to show that a term functions
as a mark or has acquired distinctiveness, the Board has
not been enthusiastic about their probative value. In In
re Petersen Manufacturing Co., Inc., 229 USPQ 466, 468
(TTAB 1986), cited by applicant in its brief, the Board
Ser No. 76600374
9
specifically stated that “a more persuasive case could be
made if each declaration filed was written in the
declarant’s own words and more clearly showed the
declarant’s perception of the function of each designation
sought to be registered.” Further, one reason that the
Board found it reasonable in that case for the applicant to
have submitted form declarations was because they were the
only practical format due to the large number of
applications applicant had filed (16), and the large number
of declarations for each one. In In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991), the Board expressed
concern about whether the people signing the form
declarations, which were presumably drafted by applicant’s
counsel, understood the legal concepts recited in the
declarations. And in Aromatique, Inc. v. Gold Seal, Inc.,
28 F.3d 863, 31 USPQ2d 1481, 1487 (8th Cir. 1994), the Court
found that thirty-two letters were unacceptable to prove
secondary meaning, in part because “the letters are merely
copies; in some cases simply photocopies with the blank
spaces filled in, of a form letter provided by Aromatique”
and that “in substance, they amounted to hardly more than a
carte blanche approval of that which had been formulated by
a party naturally and understandably desirous of serving
its own interest.”
Ser No. 76600374
10
In the present case, the only information we have
about the circumstances with respect to the signing of the
48 statements is that applicant arranged with the Las Vegas
licensee of the mark DON THE BEACHCOMBER for restaurant and
bar services to show its bar customers the photographs of
applicant’s and the registrant’s labels for its rum
products, and “have the customers state their reaction to
the respective marks of Exhibit 1 and 2.” Affidavit of
Arthur K. Snyder, applicant’s manager. The reactions, of
course, were not the individual’s personal statements, but
were already set forth in a preprinted form which the
individuals merely completed by providing their names,
addresses, signatures and date. There is no information
about how these form statements were presented to the
individuals, or what consideration the individuals gave
them before signing. See In re Ebsco Industries Inc., 41
USPQ2d 1913. 1916 (TTAB 1996)(“These declarations also
deserve little weight because we have doubts as to whether
they actually reflect the views of the declarants”). The
statements by these individuals as to how they view the
mark DON THE BEACHCOMBER clearly relate to their perception
of the mark as it is used in connection with a restaurant
and bar. The statements provide no information whatsoever
as to how a consumer who is not familiar with applicant’s
Ser No. 76600374
11
restaurant and bar would regard the mark if he or she saw
it on a bottle of rum in a liquor store.
As for the five additional statements that were
obtained in June/July 2005, it is clear that the
individuals were giving their perception of the mark DON
THE BEACHCOMBER as used in connection with a restaurant and
bar. “I always refer to this restaurant and bar as DON THE
BEACHCOMBER”; “When I think of the word DON, it brings to
my mind the entire name DON THE BEACHCOMBER for this
restaurant and bar.”
We also point out that none of the statements, whether
from the first group or the second group, provides any real
information about the individual’s knowledge of or
interaction with the mark DON THE BEACHCOMBER for rum. The
statements only say the person has visited the restaurant
and bar “on occasion.” See In re Benetton Group S.p.A., 48
USPQ2d 1214, 1217 (TTAB 1998) (“in the absence of some
basic background information about the individuals and
their experience with applicant, it is difficult to gauge
the probative value of the statements. The statements
would have been more helpful in this particular case if
they had included facts such as the length of time that the
individuals were customers of applicant, or the frequency
of the individuals’ purchases from applicant, or the
Ser No. 76600374
12
individuals’ degree of familiarity with applicant or with
the clothing industry and practices of other manufacturers
of clothing.”) In the group of 48 statements the
declarants do not indicate that they even purchase rum,
whether by the bottle in a liquor store or as a drink in a
bar. Certainly there is nothing to suggest that they
specify a particular brand of rum if or when they order a
rum drink. As for the second group of statements, although
these five declarants say that “on occasion” they visit the
DON THE BEACHCOMBER bar and restaurant in Las Vegas and
“sometimes” get a rum drink, they do not mention whether or
not they specify the brand of rum for their drink. Nor is
there any indication that the declarants ever purchase rum
by the bottle.
In any event, even these form statements that were
presumably prepared by applicant still show that the
individuals recognize that BEACHCOMBER is a significant
part of the mark. “I always refer to this restaurant as
DON THE BEACHCOMBER….” Group of 48 statements. “When I
think of the word DON it brings to my mind the entire name
DON THE BEACHCOMBER for this restaurant and bar.” Group of
5 statements.
Applicant also cites case law in support of its
position that the DON portion of its mark is dominant,
Ser No. 76600374
13
specifically the cases that state that the first word of 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. With respect to
the mark DON THE BEACHCOMBER, we do not find the word DON
to be entitled to greater weight than BEACHCOMBER, since
THE BEACHCOMBER is so intrinsically related to DON as an
identifier of who DON is. On the other hand, we do not
agree with the Examining Attorney’s position that
BEACHCOMBER is the dominant part of applicant’s mark.
Rather, 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
Section 2(d).” Brief, p. 4. We agree that there is a line
Ser No. 76600374
14
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, will not necessarily be 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
candy not confusingly similar to CUP-O-
GOLD for candy); or

Ser No. 76600374
15
(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. As noted previously, 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
impression from the registered mark. Applicant cites
Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
Ser No. 76600374
16
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 the meaning of 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.5

5 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, and the same result
that occurred in those cases should occur here. 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 does
not mean that we agree with applicant that such cases are
controlling herein. Applicant has cited 19 cases in the 21 pages
of text in its brief. We have chosen not to burden this opinion
with a discussion of each case, or an explanation as to why we
Ser No. 76600374
17
In comparing the marks in their entireties, we find
that the similarities between the marks far outweigh the
dissimilarities. That is, because of the presence of the
arbitrary word BEACHCOMBER in both marks, consumers are
likely to believe that DON THE BEACHCOMBER is a variation
of the mark BEACHCOMBER, and that, when used on identical
goods, both marks identify goods emanating from the same
source. See Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

find each to be distinguishable. Just as an example, however, we
point out that applicant’s reliance on Electronic Realty
Associates, Inc. v. Kayser-Roth Corp., 216 USPQ 61 (TTAB 1982) is
misplaced. The Board found no likelihood of confusion between
ERA and GOLDEN ERA, both for clothing, not because one may
generally add a term to another’s mark and not cause confusion,
but because of a very specific fact situation that is not present
in this appeal. The opposer in the cited case was relying on
common law rights in its mark for clothing and, because it used
its mark only on clothing that it marketed to personnel of its
ERA realty network, the Board found that clients and consumers
would view the mark as a monogram for “Electronic Realty
Associates” and would pronounce it as the individual letters E-R-
A, rather than the word ERA.
We also point out that, 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. 3, that “the Examining Attorney’s Brief further
speculates, in the absence of any legal authority, that the
single word BEACHCOMBER of the cited registration is dominant by
necessity. We are not told what the necessity is by the
Examining Attorney’s Brief.” 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.
Ser No. 76600374
18
1992) (“when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines”).
With respect to the comments made in the customer
statements about lack of confusion, it goes without saying
that these statements can in no measure be considered in
the nature of a survey, by which we can extrapolate from
these comments that others would have similar views. The
statements have none of the guarantees of impartiality that
a valid survey would have; in fact, the statements were
obtained at applicant’s own premises, where it renders bar
and restaurant services under the same mark that it seeks
to register for rum. Further, the statements cannot even
be given weight as clearly representing the views of even
the particular individuals who signed them. We have
already indicated some of our problems with the first set
of 48 statements, i.e., the language represents legal
concepts, and it is not clear that the individuals were
aware of the meaning of these concepts; the individuals do
not indicate whether they are even consumers of rum; and
the individuals’ conclusions about “no problem of
confusion” may have been influenced by their knowledge of
DON THE BEACHCOMBER for bar and restaurant services, and by
the fact that they made the statement in the DON THE
Ser No. 76600374
19
BEACHCOMBER bar. As a result, their views on the issue of
likelihood of confusion provide no evidence as to how
purchasers of bottles of rum, knowing of the registrant’s
BEACHCOMBER flavored rums, would react to applicant’s mark
if they were to see a bottle of DON THE BEACHCOMBER rum in
a liquor store. Moreover, the statements were made by
individuals after being shown the respective labels in a
side-by-side comparison. “This type of presentation
introduces additional features, such as the trade dress of
the packages, which are not directly involved in a
determination of the likelihood of confusion between the
marks.” Marshall Field & Co. v. Mrs. Fields Cookies, 25
USPQ2d 1321, 1334 (TTAB 1992).
As for the second set of statements, those five
individuals assert that “when I look at both bottles
together, I am not confused because the DON THE BEACHCOMBER
label is so different in appearance, sound and meaning from
BEACHCOMBER alone that I am sure the source for each one is
different.” The quoted sentence indicates that the
declarant is not confused because of the DON THE
BEACHCOMBER label, but the label has additional matter on
it, and the declarants may not be confused because of the
additional features of the trade dress, rather than because
of the marks alone. Further, this assertion, as noted
Ser No. 76600374
20
above, is based on a photograph showing bottles behind a
bar, with applicant’s and the registrant’s bottles
appearing next to each other on the middle shelf. In our
review of the photograph, we find it difficult to make out
the trademarks on either bottle. Further, the way
applicant’s bottle is turned in this display the word
BEACHCOMBER is not really visible. The difficulty in
discerning the marks in the exhibit, and applicant’s mark
in particular, raises a question about how carefully the
declarants read the statement, and suggests, to the extent
that they did read it, that they were not confused because
they saw only the word DON on applicant’s bottle.
In summary, because of the various problems with the
statements, as detailed above, we consider the statements
by these individuals that they are not confused by the
respective marks to be entitled no weight in the likelihood
of confusion analysis.
Accordingly, although we recognize that there are
specific differences between the marks DON THE BEACHCOMBER
and BEACHCOMBER, the question is not whether people will
confuse the marks, but whether the marks will confuse
people. See Columbian Steel Tank Co. v. Union Tank and
Supply Co., 277 F.2d 192, 196, 125 USPQ 406, 409 (1960);
Paula Payne Products Co. v. Johnson Publishing Co., Inc.,
Ser No. 76600374
21
473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). As the Court
stated in In re West Point-Pepperell, Inc., 175 USPQ 558,
559 (CCPA 1972), “Of course, purchasers comparing
appellant's mark with the mark ‘West Point’ would readily
distinguish them but that does not persuade us that they
would not be likely to assume that ‘West Point’ woolens and
‘West Point Pepperell’ textiles and textile products have a
common origin, or at least that two companies had merged.”
As noted previously, the du Pont factors of the legally
identical nature of the goods, the identical channels of
trade, the conditions of purchase (unsophisticated members
of the general public, with little care taken in choosing
the product), and the strength of the cited mark in terms
of the broader scope of protection to be accorded an
arbitrary term, all favor a finding of likelihood of
confusion. In view thereof, the differences in the marks
resulting from the additional words DON THE in applicant’s
mark are insufficient to distinguish applicant’s mark from
the cited mark. Because of the well-established rule that
a lesser degree of similarity of marks is necessary to
support a finding of likelihood of confusion when marks are
used on identical goods, we find that the du Pont factor of
the similarity of the marks also favors a finding of
likelihood of confusion. Accordingly, we find that
Ser No. 76600374
22
applicant’s mark DON THE BEACHCOMBER for rum is likely to
cause confusion with the cited mark BEACHCOMBER, registered
for flavored rum.
Decision: The refusal of registration is affirmed.