Philz Coffee, Inc.

Trademark Trial and Appeal Board

Jul 27, 2017

No. 86758904 (T.T.A.B. Jul. 27, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Philz Coffee, Inc.
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Serial No. 86758904
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Brian R. Coleman of Perkins Coie LLP for
Philz Coffee, Inc.

John Yard, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Bergsman, Wellington, and Lykos,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Philz Coffee, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark JACOB’S WONDERBAR, in standard character format, for “coffee” in
International Class 30.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act,

1 Application Serial No. 86758904 was filed on September 16, 2015, based on an allegation of
first use anywhere and in commerce on December 31, 2001, under Trademark Act Section
1(a).
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15 U.S.C. §1052(d), in view of the registration for the mark JACOBS, in typeset, for
“coffee and instant coffee” in International Class 30.2
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. The Examining Attorney denied the request and the appeal was then
briefed, including a reply brief from Applicant. For the following reasons, we affirm
the likelihood of confusion refusal.
I. Preliminary Matters
Applicant’s Brief Exceeds 25 Page Limit
Trademark Rule 2.142(b)(2) provides:
… Without prior leave of the Trademark Trial and Appeal Board, a brief
shall not exceed twenty-five pages in length in its entirety, including the
table of contents, index of cases, description of the record, statement of the
issues, recitation of the facts, argument, and summary. A reply brief from
the appellant, if any, shall not exceed ten pages in length in its entirety.
Unless authorized by the Board, no further briefs are permitted.

Trademark Board Manual of Procedure (TBMP) § 1203.01 (June 2017) (Form of Brief)
provides that “[a] brief filed in an ex parte appeal to the Board must conform to the
requirements” of Rule 2.142(b)(2) and “[i]f an applicant files a brief that exceeds the
twenty-five page limit … without prior leave of the Board, the brief will not be
considered.”
Applicant’s appeal brief, filed on March 17, 2017, is twenty-eight pages, not
including the cover page but including the tables of contents and authorities. It

2 Registration Nos. 970897 issued on October 16, 1973, renewed. The registration identifies
the mark in “typeset” which is the predecessor term and equivalent to a “standard character”
mark. The Examining Attorney also cited Reg. No. 955504 (for the same mark and goods),
but this registration was cancelled on March 11, 2016.
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therefore violates Rule 2.142(b) and, in accordance with the rule, we give it no further
consideration. See In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (Board refused
to consider applicant’s 29-page brief).
We do not treat Applicant’s failure to file a conforming appeal brief as tantamount
to failure to file a brief, which would result in the dismissal of the appeal. Rather, we
decide the appeal on the merits and record before us. In doing so, we have the benefit
of Applicant’s arguments set forth its response to the first Office Action,3 its request
for reconsideration,4 as well as its reply brief.5
Evidentiary Objection
The Examining Attorney has objected to “evidence attached to [Applicant’s] brief
which does not appear as part of the record prior to appeal.”6 Inasmuch as we are not
considering Applicant’s brief, as discussed supra, the objection is moot. Nevertheless,
as the Examining Attorney correctly points out, the record in an application should
be complete prior to the filing of an appeal and an appeal brief is not an opportunity
to introduce new evidence. Trademark Rule 2.142(d). See also, TBMP §§ 1203.02(e)
and 1207.01. Thus, even if we were to consider Applicant’s appeal brief, and we do
not, we point out that the attachment of materials not previously submitted is
improper.

3 Response filed on April 25, 2016.
4 Request for reconsideration filed on November 21, 2016; 4 TTABVUE.
5 10 TTABVUE.
6 9 TTABVUE 3.
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II. Likelihood of Confusion
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). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). These and other relevant factors are discussed below.
Identity of Goods and Trade Channels
We first consider the du Pont factor involving the relatedness of goods and
channels of trade. It is settled that in making our determination, we must look to the
goods as identified in the application vis-à-vis the goods recited in the cited
registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). In this case, the application and registration identify the same
goods – coffee.7
Because the involved goods are identical, we must presume that the channels of
trade and classes of purchasers are the same. Stone Lion Capital Partners, LP v. Lion

7 The registration also lists “instant coffee,” which is encompassed by, and thus legally
identical to, Applicant’s coffee.
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Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); 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).
Accordingly, the du Pont factors involving the relatedness of the goods and
established, likely to continue trade channels weigh in favor of finding a likelihood of
confusion.
Similarity of the Marks
We next consider the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks 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). “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)
(citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re C.H.
Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). In this case, because the goods
are coffee, the average purchaser is an ordinary consumer.
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When, as here, marks appear on goods that are identical, “the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Applicant has essentially taken Registrant’s mark, JACOBS, converted it into a
singular, possessive form and added the term WONDERBAR. In spite of the
possessive form in Applicant’s mark and the addition of the term WONDERBAR, the
marks are visually and aurally similar. See Winn’s Stores, Incorporated v. Hi-Lo, Inc.,
203 USPQ 140, 143 (TTAB 1979) (“Little if any trademark significance can be
attributed to apostrophe and letter ‘s’ in opposer’s mark ‘Winn’s’ when compared with
applicant’s mark ‘Win-Way.’”).
Moreover, because JACOB’S appears first in Applicant’s mark and sounds the
same as JACOBS, it is more likely to be remembered by consumers. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will
first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., 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”).
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We do not ignore the presence of WONDERBAR in Applicant’s mark, but are
mindful that, in similar circumstances, the mere addition of a term to a registered
mark has long and often been found insufficient for purposes of obviating the
similarity between the marks or overcoming a likelihood of confusion under
Trademark Act Section 2(d). See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-
Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); and In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE
TITAN).
There are exceptions, however, as the Examining Attorney pointed out in his brief8
– these exceptions include situations where the common element is diluted or weak,
or where the marks, in their entireties, convey significantly different commercial
impressions. See TMEP § 1207.01(b)(iii) (April 2017). Applicant, indeed, has argued
that the addition of WONDERBAR helps create a “significantly different overall
commercial impression.” Specifically, Applicant asserts the term “is a known version
of a German word that shows up in English but doesn’t have one exact or official
translation” and that “[g]enerally, in English it is used in a laudatory manner.”9
Applicant then concludes, “so, in actual fact, the mark JACOB’S WONDERBAR

8 9 TTABVUE 7.
9 Response to Office Action, filed April 25, 2016, at p. 2.
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creates a different branding flavor, one that includes an arbitrary foreign sounding
term.”10
We disagree with Applicant’s argument that the addition of WONDERBAR helps
Applicant’s mark create a significantly different commercial impression from that of
Registrant’s mark. Rather, we agree with the Examining Attorney that the term
WONDERBAR is “subordinately linked to JACOB’S due to the latter term’s
possessive nature” and Applicant’s mark is therefore likely to be mistakenly viewed
by consumers “to be a WONDERBAR type or variety of coffee offered by the
Registrant under its mark JACOBS.”11 Such an understanding would be consistent
with Applicant’s assertion that WONDERBAR is generally used in a laudatory
manner. In other words, consumers already familiar with Registrant’s JACOBS
coffee would likely perceive JACOB’S WONDERBAR coffee as coming from the same
source, but the latter containing some puffery or merely suggesting a better or higher
quality line of coffee.
We further point out that there is no evidence to suggest that JACOBS or
JACOB’S is weak in the context of coffee. Thus, the factual circumstances in this
appeal are very different from those in many of the decisions cited by Applicant where
the Board, or other courts, found no likelihood of confusion. For example, in In re S.D.
Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984), a decision cited by Applicant, the
Board held that the mark DESIGNERS/FABRIC (stylized) for retail fabric store

10 Id.
11 9 TTABVUE 7.
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services, would not be likely to cause confusion with DAN RIVER DESIGNER
FABRICS (and design) for textile fabrics, based a finding that the common wording
is descriptive, if not generic, for the involved goods and services and thus had less
source-identifying value.
In sum, we find the marks to be overall more similar than dissimilar. This du Pont
factor therefore weighs in favor of finding a likelihood of confusion.
Conclusion
We have reviewed the entire record properly before us in this appeal.
Ultimately, in view of the identity of the involved goods, coffee, and their trade
channels, as well as the overall similarity of the marks, we conclude there is a
likelihood of confusion between Applicant’s applied-for mark JACOB’S
WONDERBAR and the registered mark, JACOBS.
Decision: The refusal to register Applicant’s mark JACOB’S WONDERBAR for
“coffee” is affirmed.