Overwatch Productions, LLC

Trademark Trial and Appeal Board

Mar 27, 2019

EX (T.T.A.B. Mar. 27, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Overwatch Productions, LLC
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Serial No. 87364982
_____

Daniel C. Fleming of Wong Fleming,
for Overwatch Productions, LLC.
Toby E. Bulloff, Trademark Examining Attorney, Law Office 119,
J. Brett Golden, Managing Attorney.
_____

Before Kuhlke, Shaw, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Overwatch Productions, LLC, DBA Legendary Coffee (“Applicant”) seeks
registration on the Principal Register of the mark LEGENDARY COFFEE (in
standard characters) for “coffee; coffee and coffee substitutes; coffee and artificial
coffee; coffee beans; ground coffee beans; roasted coffee beans,” in International Class
30.1

1 Application Serial No. 87364982 was filed on March 9, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as June 18, 2014. The identification of goods in TESS
contains an extra leading “coffee” which is not reflected in the application or any amendment.
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark
LEGENDARY COFFEE, as applied to the goods identified in the application, so
resembles the mark LEGENDARY LATTE, in standard characters with LATTE
disclaimed, for the following goods:
Artificial coffee; artificial coffee and tea; beverages made of
coffee; beverages with a coffee base; caffeine-free coffee;
chicory and chicory mixtures, all for use as substitutes for
coffee; chicory based coffee substitute; chocolate bark
containing ground coffee beans; chocolate covered roasted
coffee beans; coffee; coffee and artificial coffee; coffee and
coffee substitutes; coffee and tea; coffee based beverages;
coffee beans; coffee beverages with milk; coffee capsules
containing coffee for brewing; coffee essences; coffee
essences for use as substitutes for coffee; coffee extracts;
coffee extracts for use as substitutes for coffee; coffee
flavored syrup used in making food beverages; coffee pods;
coffee substitutes; coffee substitutes; coffee-based beverage
containing milk; coffee-based beverages; green coffee;
ground coffee beans; iced coffee; instant coffee; mixtures of
coffee and chicory; prepared coffee and coffee-based
beverages; roasted coffee beans; sugar-coated coffee beans;
unroasted coffee, in International Class 30;
owned by one registrant (the first registrant);2 and the mark LEGENDARY
DOUGHNUTS, in standard characters with DOUGHNUTS disclaimed, for
“beverages made of coffee; doughnuts; espresso drinks; tea-based beverages,” in
International Class 30, owned by a different registrant (the second registrant);3 as to

In view thereof, we use the correct identification from the application; our analysis is not
affected by the supernumerary word “coffee.”

2 Registration No. 4417344 issued October 15, 2013; Section 8 declaration accepted; Section
15 declaration acknowledged.
3 Registration No. 4514235 issued April 15, 2014.
Serial No. 87364982
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be likely to cause confusion, to cause mistake, or to deceive. After the Examining
Attorney made the refusal final, Applicant appealed. For the reasons set forth below,
we affirm the refusal to register based on the cited mark LEGENDARY LATTE but
reverse as to the cited mark LEGENDARY DOUGHNUTS.
I. Evidentiary Issue
Applicant attached to its brief several web page screen shots, none of which had
been submitted previously. See Exhibit A, 4 TTABVUE 19-41. The Examining
Attorney objected to the new material. 6 TTABVUE 8. The evidentiary record in an
application should be complete prior to the filing of an ex parte appeal to the Board.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). The Examining Attorney’s objection
to the web page evidence first submitted with the appeal brief is sustained. Id.; In re
Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014).
Accordingly, we give no further consideration to the evidence submitted for the first
time with Applicant’s brief, or any arguments related thereto.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors 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);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, 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
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(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. Similarity of the Goods and Channels of Trade
We first consider the second and third du Pont factors, the similarity of the goods,
channels of trade, and classes of customers. Applicant’s goods include coffee, coffee
substitutes, artificial coffee, and coffee beans. These goods are identical to the first
registrant’s coffee, coffee substitutes, artificial coffee, and coffee beans.4 The second
registrant’s goods include beverages made of coffee and espresso drinks. The record
shows that “coffee” is defined, inter alia, as “[t]he beanlike seeds of [various tropical
African shrubs or trees . . . cultivated in the tropics for their seeds that are dried,
roasted, and ground to prepare a stimulating aromatic drink],” “[t]he beverage
prepared from the seeds of this plant,” and “[a] serving of such a beverage.”5 We take
judicial notice that “espresso” means “[a] strong coffee brewed by forcing hot water
under pressure through darkly roasted, finely ground coffee beans” and “[a] serving
of this beverage.”6 The broad term “coffee” in the application encompasses all types

4 While the other goods listed in the first registrant’s identification appear highly related to
Applicant’s goods we need not discuss them because the application and first registration
contain identical goods. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods in a
particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
5 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, November 9, 2017
Office Action, TSDR 68. Citations to the TSDR record are to the .pdf version.
6 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Serial No. 87364982
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of coffee, including the espresso in the second registrant’s identification. See In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.”’).
To the extent indicated, the identified goods in the application are identical or
legally identical to the goods in the registrations. Given the legal identity of the goods
in part, and the lack of restrictions or limitations in the application and registrations
as to their nature, channels of trade, or classes of purchasers, we must presume that
the channels of trade and classes of purchasers are also the same (i.e., ordinary
consumers who purchase and drink coffee). In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion). In its appeal briefs, Applicant
does not dispute that its identified goods are identical to the first or second
registrant’s identified goods.
The second and third du Pont factors weigh heavily in favor of a finding that
confusion is likely for each cited registration.
B. Purported Weakness of the Common Term LEGENDARY
The fifth du Pont factor is the fame or strength of the prior mark, and the sixth
factor is the number and nature of similar marks in use for similar goods or services.

Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). The definition is taken
from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE at
ahdictionary.com, accessed March 14, 2019.
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Du Pont, 177 USPQ at 567. In determining strength of a mark, we consider both
inherent strength, based on the nature of the mark itself, and commercial strength
or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686
(Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014). And, as set out as the sixth du Pont factor, we may give weight to any
commercial weakness based on third-party use of similar marks for the same or
similar services.7 Du Pont, 177 USPQ at 567.
As to conceptual strength, Applicant posits that “the term ‘Legendary’ . . . is
relatively descriptive or suggestive, and there[fore] entitled to a lesser degree of
protection.” Brief, p. 2 (4 TTABVUE 6). Neither Applicant nor the Examining
Attorney made of record a dictionary definition of the word LEGENDARY. We take
judicial notice that LEGENDARY means “of, based on, or discussed in legend” and
“extremely well known; famous or renowned.”8 Based on these definitions alone, we
do not find LEGENDARY to be descriptive, suggestive, or otherwise conceptually
weak for coffee.

7 Although Applicant conflates the fifth and sixth factors and discusses their substance under
the first du Pont factor, we consider Applicant’s arguments and the evidence of record
relating to strength and the number and nature of other marks under the fifth and sixth
factors.
8 From THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, at
ahdictionary.com, accessed March 25, 2019.
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As for marketplace strength there is no evidence regarding the marks’ commercial
strength, as is typical with ex parte appeals in which the owners of the cited
registrations are not parties.
In support of its position that LEGENDARY is weak and entitled only to a limited
scope of protection, Applicant invokes the sixth du Pont factor by pointing to 16 third-
party registrations for marks incorporating the term LEGENDARY, see TSDR 524-
553, for “brewed or distilled products such as liquor, beers and tea,”9 Brief, p. 5 (4
TTABVUE 9), and 248 additional third-party registrations for marks incorporating
the term LEGENDARY, see TSDR 34-523, for, inter alia, various goods and services
in “the food and beverage industry more broadly,”10 Brief, p. 6 (4 TTABVUE 10),
which Applicant submitted with its October 16, 2017 Response to Office Action.
Applicant argues that the Examining Attorney failed to properly consider the effect
of all of the third-party registrations, and instead focused his consideration too
narrowly on whether the registrations covered coffee products specifically, as opposed
to other food-and-beverage goods or services that might be similar to Applicant’s
coffee goods. Applicant believes that the Examining Attorney “failed to appreciate the
significance of” the third-party registration evidence which, in Applicant’s view,

9 These registrations identify alcoholic beverages, iced tea, a food and wine festival, and a
brewery.
10 These registrations identify myriad goods and services, the majority of which do not appear
facially related to “the food and beverage industry.” Examples include comic books, television
shows, toys, cybersecurity, computer games, clothing, jewelry, musical recordings, cosmetics,
hotels, motorcycles, life coaching, paints, aquarium fish, pharmacies, guns, furniture,
guitars, trading cards, strollers, education, entertainment, and cigars.
Serial No. 87364982
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“shows how the term ‘Legendary’ is received by consumers with respect to the food
and beverage industry more broadly.” Id.
In Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., the Court of Appeals
for the Federal Circuit recently reiterated that, as they “underscored in Century 21,
the ‘relevant du Pont inquiry is “[t]he number and nature of similar marks in use on
similar goods.”’” Omaha Steaks, 908 F.3d 1315, 128 USPQ2d 1686, 1693-94 (Fed. Cir.
2018) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) and Weiss Assocs., Inc. v. HRL Assocs., Inc., 902
F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)). In Omaha Steaks, the appellant’s
mark was used in connection with “meat,” while the appellee’s mark was used in
connection with “meat, including boxed beef primal cuts.” On appeal to the Federal
Circuit, the appellant argued, inter alia, that the Board relied on a much broader
range of goods lacking any similarity to meat products when evaluating the sixth du
Pont factor. Vacating and remanding to the Board, the court found that although the
Board had determined that the parties’ goods were legally identical, the Board’s
analysis under the sixth du Pont factor was flawed because it improperly considered
third-party marks that include the word “Omaha” in connection with a variety of
goods and services (such as popcorn, wine, oriental foods, and alcoholic beverages)
regardless of whether they involved meat. Omaha Steaks, 128 USPQ2d at 1693.
The court noted that the goods relied upon by the Board “bear no relationship to
meat or meat-based products. Accordingly, such goods are not ‘similar’ to meat
products.” Id. at 1694. Specifically, the court found that there was no evidentiary
Serial No. 87364982
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support for finding that the diverse food goods and services of the third-parties (i.e.,
“goods and services for oriental foods, alcoholic beverages, café food, or grocery
delivery services,” id.) were similar or related – even though they were all “food
products.” Id. The court went on to discuss National Cable Television, in which it
“made clear that the present analysis only involves goods like those being offered by
the parties to the ‘relevant public,’ while third-party use outside of that relevant
market is meaningless.” Id. (quoting Nat’l Cable Television Ass’n v. Am. Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)).
Here, Applicant did not submit any evidence to demonstrate how any of the 16
third-party registrations covering, as it summarized it, “brewed or distilled products
such as liquor, beers and tea,” or any of the 248 additional third-party registrations
identifying goods and services in “the food and beverage industry more broadly” are
related to coffee. Similarly, Applicant has not demonstrated that any of the third-
party registrations cover goods and services directed to the relevant public, which, as
noted earlier, comprises ordinary consumers who purchase and drink coffee. See id.
(When considering third-party marks under the sixth factor, “the ‘real world segment
of the public is limited to the market or universe necessary to circumscribe
purchasers or users of products or services like those being offered by the parties’
under a common mark.”) (quoting Nat’l Cable Television, 19 USPQ2d at 1430). “Such
limits are important to the rationale underlying” the sixth factor. Id. See also In re
i.am.symbolic llc, 866 USPQ2d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)
(disregarding third-party registrations for goods where the proffering party “has
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neither introduced evidence, nor provided adequate explanation to support a
determination that the existence of I AM marks for goods in other classes, ... support
a finding that registrants’ marks are weak with respect to the goods identified in their
registrations”).
Upon review of the third-party registrations submitted with Applicant’s October
16, 2017 Response to Office Action, we find none (other than the two cited
registrations) that identifies coffee goods or appears to be directed to the relevant
public. See Omaha Steaks, 128 USPQ2d at 1693. However, giving Applicant the
benefit of any doubt as to stimulating, caffeinated beverage goods, we consider for
purposes of our analysis under the sixth factor the following five use-based
registrations, owned by four third-parties, to be for related goods and directed to the
relevant public in the broadest sense, and most probative:11
Registration
No.
TSDR
Page Mark Selected Goods
4831915 120-21 Carbonated soft drinks
4501526 166-67 LEGENDARY SUNSHINE Energy drinks
3924038
and12
1763789
350-51;
516-17 LEGENDARY BERRY Powdered mixes for making soft drinks; Non-
carbonated soft drinks
4060148 542-43 LEGENDARY ICED TEA Iced tea

11 Registrations based on the Madrid Protocol are not evidence of use of the marks; therefore,
they are omitted from this chart.
12 These two registrations for the same mark are owned by the same third-party.
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In this case there is no evidence of third-party usage, there is only evidence of just
a few third-party registrations. The “existence of [third-party] registrations is 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). While there is no minimum number of third-party marks required to
show weakness, five registrations, coupled with no evidence of common law uses of
LEGENDARY marks, are a relatively small number compared to the number of such
marks in cases that have found weakness based on those marks. See, e.g., In re Inn
at St. John’s, LLC, 126 USPQ2d 1742, 1746 (four third-party registrations and no
third-party uses were “a far cry from the large quantum of evidence of third-party use
and third-party registrations that was held to be significant” in the Federal Circuit’s
decisions in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
Fed. Cir. 2015)).13 Cf. TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d
1409, 1427-28 n.92 (TTAB 2018) (67 third-party registrations and numerous uses of
TRADER-formative marks showed that the formative was weak and could not form
the basis of petitioner’s claimed family of marks); i.am.symbolic, 123 USPQ2d at 1751
(where the conflicting marks were identical, evidence of the coexistence of the cited

13 In Jack Wolfskin, there were at least 14 third-party registrations and uses of paw print
marks that showed the weakness of that design element in the opposer’s mark, 116 USPQ2d
at 1136 n.2, while in Juice Generation, there were approximately 26 third-party registrations
and uses of marks containing the words “Peace” and “Love” that showed the weakness of
those words in the opposer’s marks. 115 USPQ2d at 1673 n.1.
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registered mark with two third-party registrations of the same mark for the same or
similar goods “falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark
components present in” Jack Wolfskin and Juice Generation). The Federal Circuit has
held that “extensive evidence of third-party use and registration ‘is powerful on its
face,’ even where the specific extent and impact of the usage has not been
established,” Jack Wolfskin, 116 USPQ2d at 1136 (quoting Juice Generation, 115
USPQ2d at 1674-75), but because there is no such “extensive” evidence here – even
stretching for Applicant’s benefit what we might consider similar goods – we must
scrutinize the third-party marks carefully to determine whether they show that the
term LEGENDARY for coffee is weak. We find that they do not.
Although “[t]hird party registrations are relevant to prove that some segment of
the composite marks which both contesting parties use has a normally understood
and well recognized descriptive or suggestive meaning, leading to the conclusion that
that segment is relatively weak” Juice Generation, 115 USPQ2d at 1674 (quoting 2 J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:88
(4th ed. 2015)), this record includes only a handful of third-party registrations for the
mark LEGENDARY for use in connection with potentially caffeinated beverages. At
most these registrations show some suggestiveness in the use of LEGENDARY in a
somewhat laudatory sense, and, to that extent, somewhat limits the scope of
protection. See Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-
95 (CCPA 1976) (even if “there is no evidence of actual use” of “third-party
registrations,” such registrations “may be given some weight to show the meaning of
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a mark in the same way that dictionaries are used”). However, it is not so weak that
confusion is unlikely as between highly similar marks for identical goods. Even weak
marks are entitled to protection against registration of similar marks. See In re
Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). While the evidence of record
does not support a finding of fame under factor five or dilutive uses under factor six,
and we find these factors to be neutral, it does point to some conceptual weakness of
the term LEGENDARY in connection with similar food and beverages, which we
account for in the discussion of the marks.
C. Similarity of the Marks
We next consider the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps., 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). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). Under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side comparisons between marks, and
must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
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trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here, as noted
above, the average purchaser includes ordinary consumers who purchase and drink
coffee.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751. Moreover, where, as in the present case, the marks are used in
connection with legally identical goods, the degree of similarity between the marks
necessary to support a finding of likely confusion declines. Viterra, 101 USPQ2d at
1908; In re RiseSmart Inc., 104 USPQ2d 1931, 1935 (TTAB 2012). See also
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Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d
1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate, 23 USPQ2d at 1700.
Applicant’s mark is LEGENDARY COFFEE (COFFEE disclaimed), the first
registrant’s mark is LEGENDARY LATTE (LATTE disclaimed), and the second
registrant’s mark is LEGENDARY DOUGHNUTS (DOUGHNUTS disclaimed).
Applicant’s mark is similar in construction to each cited mark. Each of the marks is
composed of two terms, beginning with the same first word LEGENDARY followed
by a word which is descriptive (or generic) of the identified goods and disclaimed.
Although there is no mechanical test to select a dominant element of a composite
word mark, consumers would be more likely to perceive an arbitrary term which
comes first as source-identifying, rather than a descriptive or generic term which
comes second. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997) (disclaimed and generic word less dominant). Because
LEGENDARY is the first word in each mark, and the secondary terms COFFEE,
LATTE and DOUGHNUTS are generic and disclaimed, we find the term
LEGENDARY to be the dominant portion of each mark. See In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“Indeed, in view of the
marks’ structural similarity, the lead words [DETROIT ATHLETIC] are their
dominant portion and are likely to make the greatest impression on consumers.”). See
also In re Nat’l Data Corp., 224 USPQ at 752; Palm Bay Imps., 73 USPQ2d at 1692
(first word in the mark most prominent); In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant
Serial No. 87364982
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features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and
JOSE GASPAR GOLD for tequila] become nearly identical.”); Century 21 Real Estate,
23 USPQ2d at 1700 (upon encountering the marks, consumers must first notice the
identical lead word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). However, this dominant position is
tempered by the fact that the word LEGENDARY is somewhat weak.
The marks are similar in appearance and sound in that the word LEGENDARY
is the first word in each mark. The second word in Applicant’s mark is COFFEE,
whereas the second words in the cited marks are LATTE and DOUGHNUTS. While
the terms COFFEE, LATTE, and DOUGHNUTS clearly differ in appearance and
sound, COFFEE and LATTE are similar in meaning, but DOUGHNUTS is dissimilar
in meaning.
As the Examining Attorney demonstrated, “latte” is “[a] type of coffee made with
espresso and hot steamed milk.”14 In the context of the coffee goods identified in the
application and first cited registration, the combination of the dominant first word
LEGENDARY with the secondary generic words COFFEE and LATTE imbues both
the LEGENDARY COFFEE and LEGENDARY LATTE marks with the same
connotation and commercial impression of a renowned coffee beverage. However, in
the context of the coffee goods in the application and second cited registration, the
secondary words COFFEE and DOUGHNUTS create different commercial

14 OXFORD LIVING DICTIONARIES, November 9, 2017 Office Action, TSDR 49.
Serial No. 87364982
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impressions when preceded by LEGENDARY; Applicant’s mark brings to a mind a
renowned coffee beverage while the second registrant’s mark brings to mind
renowned doughnuts. Although the Examining Attorney submitted evidence that
coffee and doughnuts are a common food and drink pairing,15 the connotation and
overall commercial impression of LEGENDARY COFFEE and LEGENDARY
DOUGHNUTS differs enough to make confusion less likely between these two marks.
Considering the respective marks in their entireties, given the resemblance in
sound, appearance, connotation, and commercial impression, we find that Applicant’s
mark is similar to the first registrant’s mark LEGENDARY LATTE. We further find
that the differing connotations and commercial impressions of Applicant’s mark and
the second registrant’s mark LEGENDARY DOUGHNUTS outweigh the similarities
in appearance and sound. See Champagne Louis Roederer S.A. v. Delicato Vineyards,
148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) (CRISTAL for champagne held not
confusingly similar to CRYSTAL CREEK for wine). Accordingly, the first du Pont
factor regarding the similarity of the marks weighs in favor of a likelihood of
confusion as to the first registrant’s mark LEGENDARY LATTE, but weighs against
a likelihood of confusion as to the second registrant’s mark LEGENDARY
DOUGHNUTS.
III. Decision
We find that Applicant’s mark LEGENDARY COFFEE is similar to the registered
mark LEGENDARY LATTE, such that when they are used in connection with legally

15 See November 9, 2017 Office Action, TSDR 53-63.
Serial No. 87364982
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identical coffee goods found in the same trade channels offered to the same class of
consumers, confusion is likely. However, find that Applicant’s mark LEGENDARY
COFFEE is dissimilar to the registered mark LEGENDARY DOUGHNUTS in
connotation and commercial impression that confusion is not likely. In view thereof,
the refusal to register Applicant’s mark is affirmed based on the first registrant’s
mark, but is reversed based on the second registrant’s mark.