ORE Originals, Inc.

Trademark Trial and Appeal Board

Jun 22, 2018

No. 86834865 (T.T.A.B. Jun. 22, 2018)

Hearing: April 25, 2018 Mailed: June 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re ORE Originals, Inc.
_____

Serial Nos. 86834705, 86834716 and 86834865
_____

Garfield Goodrum of Garfield Goodrum Design Law
for ORE Originals, Inc.

Katherine Stoides, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____
Before Wolfson, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant ORE Originals, Inc. seeks Principal Register registrations for the marks
CUPPA THIS CUPPA THAT, CUPPA THIS and CUPPA COLOR, all in standard
characters, and all for “cups, mugs.”1 The Examining Attorney refused registration of
each mark under Section 2(d) of the Trademark Act on the ground that Applicant’s
marks so resemble the registered mark shown below

1 Application Serial Nos. 86834705 (the “‘705 Application”), 86834716 (the “‘716 Application”)
and 86834865 (the “‘865 Application”), each filed November 30, 2015 under Section 1(a) of
the Trademark Act, alleging first use dates of January 22, 2013, December 19, 2013 and
December 18, 2014, respectively.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 86834705, 86834716 and 86834865
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for “collectable coffee mugs, cups and steins, dishes”2 that use of Applicant’s marks
in connection with Applicant’s goods is likely to cause confusion. After the refusals
became final, Applicant appealed each of them and filed requests for reconsideration
which were denied. The Board consolidated the appeals, 9 TTABVUE, and Applicant
and the Examining Attorney filed briefs.
I. Applicant’s Post-Hearing Motion to Remand and to Take Judicial
Notice
Well after briefing was complete and after the oral hearing, Applicant filed a
motion to remand to enter disclaimers of CUPPA in each application, and for the
Board to take judicial notice of certain evidence. The motion is denied.
With respect to the proposed disclaimer, Applicant has not established the
requisite good cause for a remand. TBMP § 1205.01 (June 2017). Among other things,
the Examining Attorney never required a disclaimer, so the proposed amendment is
not “an attempt to comply with a requirement,” and perhaps more importantly the
proposed disclaimer “would serve no useful purpose.” Id. Indeed, any disclaimer
would not be relevant to the Section 2(d) refusal. In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“The technicality of a disclaimer in

2 Registration No. 2117606, issued December 2, 1997; second renewal. There appears to be a
stray marking at the bottom right corner of the mark as it appears in the registration
certificate, apparently the word “published,” which was possibly added mistakenly by the
Office; we do not believe it is intended to be part of the mark.
Serial Nos. 86834705, 86834716 and 86834865
3
National’s application to register its mark has no legal effect on the issue of likelihood
of confusion.”); In re RSI Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). These
considerations are especially important here, given the exceedingly late “stage of the
appeal at the time the amendment is filed.” TBMP § 1205.01.
Nor has Applicant established good cause for its request that we take judicial
notice of: (1) dictionary definitions; (2) the allegedly “common knowledge that coffee
and other hot beverages are generally always consumed with a cup and mug and that
consumers receive these beverages in cups and mugs, when they purchase them;” and
(3) unauthenticated photographs taken by Applicant’s counsel and embedded in its
motion. 22 TTABVUE 4-5. Because the evidence was previously available, and the
alleged “common knowledge” is not suitable for judicial notice, we decline the request
to take judicial notice. Fed. R. Evid. 201(b); cf. TBMP § 1207.02. “There is a point at
which prosecution or examination must come to an end,” TBMP § 1207.02, and we
are now well past that point.3
II. Likelihood of Confusion
Our determination under Section 2(d) is based on all of the probative evidence of
record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

3 Applicant’s informal request, embedded in its Appeal Brief, that we suspend this case to
allow it to file a petition to cancel the cited registration in part to restrict its identification of
goods, 12 TTABVUE 3, is also too late. See generally In re Cook Medical Technologies LLC,
105 USPQ2d 1377, 1384 (TTAB 2012).
Serial Nos. 86834705, 86834716 and 86834865
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1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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.”).
A. The Goods, Channels of Trade and Consumers
Turning first to the goods and channels of trade, they are legally identical, because
Applicant’s “cups, mugs” encompass Registrant’s “collectable coffee mugs, cups.”
Because Applicant’s and Registrant’s goods are legally identical, we must presume
that the channels of trade and classes of purchasers for those goods are also the same.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are identical goods, the channels of trade and classes of
purchasers are considered to be the same).4

4 Applicant’s argument that Registrant’s “collectable” cups and mugs have “special
attributes” such as “unusual artwork,” and are sold in different channels of trade than
“typical” cups and mugs is irrelevant. Applicant has not excluded collectable cups and mugs
from its own, unlimited, identification of goods, and as a result Registrant’s collectable cups
and mugs fall squarely within Applicant’s identification. It also does not escape notice that
one of Applicant’s specimens of use promotes the “CUPPA THIS CUPPA THAT™ Collection,”
which could be read to suggest that Applicant’s goods are also “collectable.”
Serial Nos. 86834705, 86834716 and 86834865
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The legal identity of Applicant’s and Registrant’s goods and their overlapping
channels of trade and classes of purchasers not only weigh heavily in favor of finding
a likelihood of confusion, but also reduce the degree of similarity between the marks
necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
B. The Strength of Registrant’s Mark
Applicant argues that Registrant’s mark is conceptually and commercially weak
and therefore entitled to only a narrow scope of protection. While we acknowledge
that Registrant’s mark is not particularly strong, we disagree with Applicant’s
contention that it “is entitled to only limited rights not extending beyond identical or
nearly identical marks.” 12 TTABVUE 3.
As for conceptual weakness, we accept Applicant’s argument that CUPPA can be
a contraction of “cup of,” or mean “a cup of tea.” As a result, the mark is obviously
suggestive of Registrant’s goods, which, notwithstanding their “collectable” nature,
could at least theoretically contain tea or other liquids. Nevertheless, to the extent
Applicant argues that the cited mark is descriptive of Registrant’s goods, this is an
impermissible collateral attack on the cited registration. In this ex parte proceeding,
“inasmuch as the cited mark is registered on the Principal Register, we must assume
that it is at least suggestive.” In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007)
(citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir.
1997)). Moreover, it is settled “that likelihood of confusion, mistake or deception is to
be avoided as much between weak marks as between strong marks.” In re Colonial
Serial Nos. 86834705, 86834716 and 86834865
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Stores, Inc., 216 USPQ 793, 795 (TAB 1982) (citing King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)).
As for Applicant’s argument that the cited mark is commercially weak and diluted,
we are not persuaded. Applicant relies on nine third-party registrations for marks
containing the word CUPPA. However, Applicant has not provided any evidence that
these marks are actually in use, or the extent of any use, and third-party registrations
alone are “not evidence of what happens in the market place or that customers are
familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,
1745-46 (TTAB 2016). While a much larger number of third-party registrations might
suggest commercial weakness, nine third-party registrations is not sufficient. In re
Inn at St. Johns, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018); In re Morinaga, 120
USPQ at 1746 & n.8. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015)
and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed.
Cir. 2015).
Furthermore, none of the third-party registrations Applicant cites are for cups or
mugs. While Applicant argues (without supporting evidence) that there is a
relationship between the beverages and restaurant/coffee shop services identified in
these registrations and the cups and mugs at issue here, that alleged relationship is
not close enough to establish weakness of the cited mark for cups and mugs where
the record reveals only two CUPPA marks for cups and mugs, Applicant’s and
Serial Nos. 86834705, 86834716 and 86834865
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Registrant’s. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751
(Fed. Cir. 2017); In re Inn at St. Johns, 126 USPQ2d at 1746. This factor is neutral.
C. The Marks
The marks are more similar than dissimilar “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In fact, the first and dominant
element of each of Applicant’s marks, CUPPA, is the primary and only literal element
of Registrant’s mark.
The shared term CUPPA is the dominant element of Applicant’s marks because it
comes first. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”). See also, Palm Bay Imps., Inc., 73
USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Moreover, the remaining terms in
Applicant’s marks are less significant than CUPPA in forming the marks’ overall
commercial impressions. The terms THIS and THAT, whether presented individually
(such as in the ‘716 Application for CUPPA THIS) or together (such as in the ‘705
Application for CUPPA THIS CUPPA THAT) are of relatively little trademark
significance. The terms are ubiquitous in the English language and could refer to
almost anything that could fit inside or be associated with a cup, whereas CUPPA
has more particular meanings and is more distinctive. Cf. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE to be confusingly
Serial Nos. 86834705, 86834716 and 86834865
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similar, stating “[t]he addition of the word ‘The’ at the beginning of the registered
mark does not have any trademark significance. ‘The’ is a definite article. When used
before a noun, it denotes a particular person or thing.”); In re Narwood Prods., Inc.,
223 USPQ 1034 (TTAB 1984). As for the word COLOR, whether it refers to the color
of Applicant’s cups and mugs themselves, or to the color of their contents, it merely
modifies the first term CUPPA, which is the primary focus of each of Applicant’s
marks. In short, the additional terms THIS, THAT and COLOR in Applicant’s marks
have relatively little source-identifying significance.
The relatively minor design element of Registrant’s mark is not enough to prevent
confusion. The dominant portion of the mark is the term CUPPA. In re Viterra Inc.,
101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the
dominant portion”).5 Furthermore, as Applicant points out, the letters in Registrant’s
mark “appear to be tall hot-beverage cups,” while “[t]he vowel ‘u,’ the second letter,
even has curved lines above it, suggesting the heat leaving the top of such a mug
filled with a hot beverage.” 12 TTABVUE 6. In other words, the design element of
Registrant’s mark reinforces the meaning of the word CUPPA and the nature of
Registrant’s goods. Similarly, while Applicant is of course correct that we may not
ignore the additional terms in its marks, and that these terms give Applicant’s marks
a somewhat different appearance, sound and meaning from Registrant’s mark, which

5 It is irrelevant that Registrant’s mark is depicted in a stylized manner because Applicant
seeks registration of its mark in standard characters, and could therefore display it in any
font style, size or color, including in a manner similar to Registrant’s display of CUPPA. In
re Viterra Inc., 101 USPQ2d at 1909.

Serial Nos. 86834705, 86834716 and 86834865
9
does not have any additional literal elements, the additional elements in Applicant’s
marks are not enough to prevent confusion. In fact, the test is not whether the marks
can be distinguished when considered side-by-side, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the goods offered under the marks is likely to result. San Fernando
Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991). Here, consumers familiar with Registrant’s mark CUPPA and design could
perceive Applicant’s marks as modified versions of Registrant’s mark, and possibly
as identifying a new product line from the source of CUPPA-brand collectable mugs
and cups.
In short, because they share the dominant term CUPPA, Applicant’s marks and
Registrant’s mark are more similar than dissimilar in appearance, sound, meaning
and overall commercial impression.6 This factor also weighs in favor of finding a
likelihood of confusion.
D. The Absence of Actual Confusion is Irrelevant
Applicant’s argument about the lack of actual confusion is not only unsupported
by any evidence, it is also irrelevant. There is no evidence regarding the extent of
Applicant’s use of its marks. Therefore, we cannot gauge whether or the extent to
which there has been an opportunity for confusion to occur if it were likely to occur.

6 Applicant’s reliance on its alleged ownership of a “family” of CUPPA marks is misplaced. In
re Cynosure Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (“a family-of-marks argument is not
available to an applicant seeking to overcome a likelihood-of-confusion refusal”).
Serial Nos. 86834705, 86834716 and 86834865
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See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903
(Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if
any, probative value here because (1) no evidence was presented as to the extent of
ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior
years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Moreover,
a lack of evidence of actual confusion carries little weight in an ex parte case such as
this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show actual
confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is
neutral.
III. Conclusion
The goods are legally identical and we therefore must presume that the channels
of trade overlap and the classes of purchasers are the same. In addition, the marks
are more similar than dissimilar. We therefore find a likelihood of confusion between
each of Applicant’s marks, CUPPA THIS CUPPA THAT, CUPPA THIS and CUPPA
COLOR, and Registrant’s mark .

Decision: The Section 2(d) refusals to register Applicant’s marks are all affirmed.