NTD Apparel, Inc.

Trademark Trial and Appeal Board

Jun 12, 2003

No. 76261476 (T.T.A.B. Jun. 12, 2003)

Mailed: 12 JUN 2003
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re NTD Apparel, Inc.
________
Serial No. 76/261,476
_______
Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for NTD
Apparel, Inc.
Wanda Kay Price, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Bucher, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
NTD Apparel, Inc. (applicant) has applied to register
the mark KOALA BLUE in typed form on the Principal Register
for goods identified as “wine, champagne, prepared
alcoholic cocktails, liqueurs, sherry, port wines, prepared
wine cocktails, wine coolers, and distilled spirits” in
International Class 33.1
1 Serial No. 76/261,476 filed on May 22, 2001. The application
is based on an allegation of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76/261,476
2
The examining attorney2 ultimately refused to register
the mark under Section 2(d) of the Trademark Act because of
two prior registrations owned by the same party for the
mark KOALA. 15 U.S.C. § 1052(d). The first registration
is for the mark shown below for “iced tea and red tea” in
International Class 30 and for “non-carbonated fruit
drinks, non-carbonated lemonade, sparkling spring water and
fruit juice” in International Class 32.3
The second registration is for the typed mark KOALA for
“sparkling fruit drinks” in International Class 32.4
After the Examining Attorney made the refusal final,
this appeal followed.
2 The current examining attorney was not the original examining
attorney in this case.
3 Registration No. 2,068,426 issued on June 10, 1997. Office
records show that the original registrant subsequently assigned
the registration to Societe Des Produits Nestle S.A. Reel/Frame
No. 1464/0206.
4 Registration No. 2,360,344 issued June 20, 2000. Office
records show that the current owner of the registration is
Societe Des Produits Nestle S.A.
Ser. No. 76/261,476
3
The examining attorney’s position is that the term
“Koala” is the dominant element of both applicant’s and
registrant’s marks. In response to applicant’s argument
that KOALA is weak for beverages, the examining attorney
noted “there are presently only two (2) registrations for
the mark KOALA for beverages, and those two registrations
are the cited registrations herein.” Brief at 6 (emphasis
in original). The examining attorney also found that the
goods were related. The principal evidence for this
finding was the fact the thirteen registrations show that
the same entity has registered a common mark for juice and
alcoholic beverages. Therefore, the examining attorney
refused to register the mark because of the likelihood of
confusion.
Applicant, on the other hand, argues that “[w]ith the
addition of the term BLUE, Applicant’s mark is readily
distinguishable from the Cited Marks.” Brief at 5.
Applicant maintains that “there are a significant number of
marks that contain the term KOALA for use with beverages.”
Brief at 11. Finally, the applicant argues that the “goods
travel in different channels of trade” and that
registrant’s goods will be marketed towards “athletes,
children, and parents of children” while “Applicant’s
Ser. No. 76/261,476
4
alcoholic beverages, however, will be marketed toward
adults.” Brief at 14.
We affirm.
Determining whether there is a likelihood of confusion
requires application of the factors set out in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). See also In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1896 (Fed. Cir. 2000). In considering the evidence
of record on these factors, we must keep in mind that
“[t]he fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We first look at the marks, which in this case are
KOALA BLUE and KOALA and KOALA and design. Obviously, the
applicant’s mark and the mark in the ‘344 registration are
identical except that applicant adds the word “blue.” With
the ‘426 registration, there is the additional difference
of the design with the word “Koala.” While the addition of
another word may significantly change the meaning,
appearance and sound of the mark, in this case, we find
Ser. No. 76/261,476
5
that the similarities far outweigh the difference between
the marks. First, there is no evidence in the record to
indicate that the term “koala” has any descriptive
significance when applied to alcoholic or non-alcoholic
beverages.5 Second, “koala” is the first word in
applicant’s mark and the only word in registrant’s marks
and it forms a conspicuous part of both marks. Aluminum
Air Seal Mfg. Co. v. Trim-Set Corp., 208 F.2d 374, 100 USPQ
52, 54 (CCPA 1953) (“Both petitioner’s mark and
respondent’s mark have ‘Trim’ as the first word which would
be spoken in calling for the goods and as the first part of
the mark “Trim’ obviously forms a conspicuous part thereof
and whether arbitrary, suggestive or descriptive cannot be
ignored”) (quoting Examiner-in-Chief’s decision with
approval). See also Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“Although
there are differences in appearance between the marks,
there are also similarities between them in that both start
with the term "KID" (a matter of some importance since it
5 While applicant has argued that the term KOALA is weak for
beverages (Brief at 11), the examining attorney has pointed out
that the cited registrations are the only two registrations for
beverages. Brief at 6. The other registrations to which
applicant refers are cancelled and the applications either have
not registered or are abandoned. Examining Attorney’s Brief at
6. Therefore, this evidence hardly demonstrates that the term
KOALA is weak when applied to beverages.
Ser. No. 76/261,476
6
is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered)
and have the same number of letters and syllables”).
Three, while we do not ignore the word “blue” in
applicant’s mark, we find that the more significant term
would be “koala,” the name of an Australian animal, rather
than the common color “blue.” Indeed, whatever ability the
word “blue” term may have to distinguish the marks is
undercut by the simple fact that registrant may use the
color blue as the color of the ink it uses to display its
mark or the background of its labels. Fourth, the marks
will still continue to mean “koala,” and while the “blue”
is not disclaimed, applicant has not shown how the term
changes the overall commercial impression of the mark.
Applicant argues that it “could refer to a certain shade of
the color blue or a body of water in Australia. In any
event, it does not have the direct connotation with the
koala ‘bear.’” Brief at 6. We cannot agree. It is hard
to escape from the fact that the mark KOLAL BLUE would also
call to mind the koala animal. While the term “blue” may
be somewhat indefinite as applicant suggests, its most
likely meaning would be to suggest that the koala is
depicted with the whimsical color “blue.” Even if the
color blue is completely arbitrary, it is simply not enough
Ser. No. 76/261,476
7
to distinguish these marks when are dominated by the
arbitrary term “koala.”
While every case must be decided on its own unique
facts, there is no rule that requires a holding of no
likelihood of confusion when even an arbitrary term is
added to a common word. Coca-Cola Bottling Co. v. Joseph
E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105106
(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 form being
so similar as to cause a likelihood of confusion”). See
also Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ
937, 939 (Fed. Cir. 1983) (SQUIRT SQUAD for floating water
toys confusingly similar to SQUIRT for balloons); Wella
Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products).
Furthermore, the slight design in the ‘426
registration would not significantly reduce the likelihood
of confusion. The design is fairly simple block letters
with the addition of one line above and one line below the
word. The Federal Circuit held that the addition of the
words “The” and “Cafe” and a diamond-shaped design to
Ser. No. 76/261,476
8
registrant’s DELTA mark still resulted in a likelihood of
confusion. In re Dixie Restaurants, 105 F.3d 1405, 1406,
41 USPQ 1531, 1534 (Fed. Cir. 1997) (more weight given to
common dominant word DELTA). More importantly, differences
in type styles between registrant’s mark and applicant’s
mark are not significant here because applicant’s mark is
in typed form and, thus, not limited to any special form.
Squirtco, 216 USPQ at 939 (“[T]he argument concerning a
difference in type style is not viable where one party
asserts rights in no particular display. By presenting its
mark merely in a typed drawing, a difference cannot legally
be asserted by that party”). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed.
Cir. 2000).
We conclude this section by finding that the marks are
similar in sound, appearance, and meaning. While there are
some differences, they would not result in a determination
of no likelihood of confusion unless the goods are not
related. To determine whether the goods are related, we
must look to the identification of goods in the application
and registration. Dixie Restaurants, 41 USPQ2d at 1534;
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Regarding the goods, it is clear that they are not
Ser. No. 76/261,476
9
identical. Applicant’s goods are various alcoholic
beverages including wine, prepared alcoholic cocktails,
liqueurs, and distilled spirits while registrant’s goods
are fruit drinks, lemonade, sparkling spring water, fruit
juice, and iced tea.
It is not necessary that the respective goods be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association or connection between the
producers of the respective goods. See In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
The examining attorney has submitted copies of 13
registrations alleging use in commerce to support the
argument that juices and alcoholic beverages are marketed
by the same entity under a common mark. Applicant has
attacked the relevance of several of these registrations on
Ser. No. 76/261,476
10
various grounds and we agree that not all are relevant.
Several are for cooking wine, wine making kits, products
sold at wholesale or simply registrations for a house mark
for dozens of items. We have not found that Registration
Nos. 980,090; 1,286,155; 1,958,566; 1,990,705; 2,139,342;
and 2,450,462 are helpful. However, the remaining
registrations do provide some indication that the
applicant’s wines and alcoholic beverages are related to
registrant’s juices and sparkling water. See, e.g.
Registration No. 2,165,915 (fruit juices, fruit juice
blends, wines, and liquor); No. 2,361,694 (mineral and
aerated waters, fruit juices, fruit drinks, wine, and
distilled spirits); No. 2,165,915 (bottled water, fruit
juice, fruit juice blends, wine, and liquor); No. 2,304,424
(fruit juice, mineral water, bottled water, wine, distilled
spirits, and wine cocktails); No. 2,326,965 (fruit juice,
tequila, prepared alcoholic cocktails including tequila and
fruit juice); No. 1,861,111 (fruit juice and wine); and No.
2106,248 (grape juice and kosher wine). Although third-
party registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
Ser. No. 76/261,476
11
single source”). See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
We do find that these registrations have some
probative value in showing that the goods are related. We
also note that applicant has not rebutted this evidence.
Applicant’s main argument is that alcoholic beverages are
not marketed to children and that registrant’s goods are
marketed to “athletes, children, and parents of children.”
Brief at 14. There is no evidence to suggest that fruit
drinks, fruit juice, sparkling water, and lemonade are
marketed to only athletes, children, and parents. Even if
this were true, we note that athletes and parents (to the
extent that they were over the legal drinking age) would
also be potential purchasers of applicant’s alcoholic
beverages. By applicant’s own admission, there is a
substantial overlap between the purchasers of applicant’s
and registrant’s goods. However, there is no evidence to
limit the purchasers of registrant’s goods in this manner.
There is no reason to find that adults in general would not
be potential purchasers of applicant’s and registrant’s
goods.
Applicant stresses the special legal limitation placed
on sale and advertising of alcoholic beverages and the
fact that not all segments of the population (e.g.,
Ser. No. 76/261,476
12
children) can consume them. Nevertheless, it is fair
to say that adults who consume alcoholic beverages can
and do consume soft drinks as well. There are no
limitations as to channels of trade in the
descriptions of goods before us and there can be
little question that alcoholic beverages and soft
drinks, travelling in their respective channels of
trade (and, quite likely, overlapping in many
respects) can and would come to the attention of the
millions of adults who drink the former.
In re Rola Weinbrennerei Und Likorfabrik GmbH & Co.,
223 USPQ 57, 58 n.1 (TTAB 1984)
The fact that one party is using its mark on soft
drinks and the other is using a similar mark on wine or
liquor has not prevented a likelihood of confusion. Pink
Lady Corp. v. L,N. Renault & Sons, Inc., 265 F.2d 951, 121
USPQ 465, 466 (CCPA 1959) (“It does not seem unreasonable
to assume that citrus fruit juices and wines are likely to
be sold in the same stores over the same counters to the
same prospective customers”; PINK LADY and design held
confusingly similar to PINK LADY); Coca Cola Bottling Co.,
188 USPQ at 106 (Confusion likely between BENGAL for gin
and BANGEL LANCER and design for club soda, quinine water,
and ginger ale); Rola Weinbrennerei, 223 USPQ at 58
(SUNAPPLE and design for apple-flavor alcoholic liqueur
confusingly similar to SUNAPPLE and design for powdered
apple flavored soft drink mix); In re Jakob Demmer, KG, 219
USPQ 1199 (TTAB 1983) (GOLDEN HARVEST and design for wines
Ser. No. 76/261,476
13
confusingly similar to GOLDEN HARVEST for non-alcoholic
apple cider).
In this case, there is no reason to find that
applicant’s wine, wine cocktails, distilled spirits and
prepared alcoholic cocktails and registrant’s bottled
waters, fruit juices and fruit drinks would not be
encountered by the same purchasers in the same stores. The
evidence and case law supports a conclusion that these
prospective purchasers would believe that there was some
relation between these products. Therefore, we conclude
that the goods are related. We note that applicant argues
that its goods “are purchased with more care than the goods
sold under the Cited Marks.” Brief at 14. However, even
if this were the case, this additional sophistication or
care would not eliminate the likelihood of confusion. Rola
Weinbrennerei, 223 USPQ at 59 (“While buyers would no doubt
be able to distinguish between applicant's liqueurs and
registrant's soft drink mixes, even knowledgeable buyers
are not necessarily expert with respect to trademarks or
immune from confusion stemming from confrontation with
virtually identical designations). Here, the addition of
the nebulous word “blue” would not eliminate that
likelihood of confusion because potential purchasers would
still likely believe that there was some relationship
Ser. No. 76/261,476
14
between the source of applicant’s and registrant’s goods
when the marks for these goods share the term “koala.”
When we consider the marks in their entireties, we
find that they would be dominated by the arbitrary term
KOALA. We also find that the goods are related and
therefore, when we consider the other factors, we conclude
that here is a likelihood of confusion in this case. To
the extent we have doubts, we resolve them, as we must, in
favor of the prior registrant and against the newcomer.
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988); Kenner Parker Toys v. Rose Art
Industries, 963 F.2d 350, 355, 22 USPQ2d 1453, 1458 (Fed.
Cir. 1992), cert. denied, 506 U.S. 862 (1992).
Decision: The refusal to register is affirmed.