Rodney Hensley dba Sozo Coffee

Trademark Trial and Appeal Board

Apr 21, 2017

No. 86685104 (T.T.A.B. Apr. 21, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: April 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hensley dba Sozo Coffee
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Serial No. 86685104
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Joel Mendoza of Trial Defense Services PC,
for Rodney Hensley
Drew M. Sander, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Kuhlke, Bergsman, and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Rodney Hensley (“Applicant”) seeks registration on the Principal Register of the
mark

Serial No. 86685104
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for “Coffee roasting and processing,” in International Class 40.1 The description of the
mark reads:
The mark consists of a white, red and black star set above
the phrase “Est. 2006” in white lettering, with a white
curved line or tilde symbol preceding the phrase “Est.
2006” and a white curved line or tilde symbol following the
phrase “Est. 2006”, which is set above the word “Sozo” in
white lettering, with a line through the “O” in “Sozo”, set
above the words “Coffee Roasting” in white lettering, with
the entire logo set over a black background.
The application states that the English translation of “Sozo” in the mark is
“Wholeness.” The colors black, red and white are claimed as a feature of the mark,
and Applicant has disclaimed the exclusive right to use the wording EST. 2006 and
COFFEE ROASTING. Applicant claims ownership of U.S. Registration No. 4066275
for the mark SOZO COFFEE ROASTING AND ESPRESSO BAR, in standard
characters, for “Coffee shops,” in International Class 43.
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, when used in connection with the
identified services, so resembles the mark SOZO, in standard characters, for “Coffee
based beverages,” in International Class 30, as to be likely to cause confusion,
mistake or deception.2

1 Application Serial No. 86685104, filed on July 7, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming a date of first use anywhere of May 1, 2015 and a date of
first use in commerce of May 2, 2015.
2 Registration No. 4097868, issued February 14, 2012. The registration states: “The English
translation of ‘SOZO’ is ‘to save, keep safe and sound, to rescue from danger or destruction’
or ‘to make well, heal, restore to health’.”
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When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the appeal was resumed.3 We affirm the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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, two key considerations are the similarities between
the goods and the similarities between the marks. 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 similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression
First, we consider the similarity of the marks. In comparing the marks we must
consider their appearance, sound, connotation and commercial impression. Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

3 In his request for reconsideration, Applicant amended the application to seek registration
on the Supplemental Register and to seek a concurrent use registration. The Examining
Attorney did not directly address either of these amendments in his denial of Applicant’s
request for reconsideration. Nevertheless, an amendment to the Supplemental Register has
no effect on a Section 2(d) refusal and Applicant failed to comply with any of the requirements
necessary to support a concurrent use claim under 37 CFR § 2.42. Inasmuch as Applicant has
not raised these amendments in his brief, we find that Applicant has waived the
amendments.
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USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the
recollection of the average purchaser who normally retains a general, rather than
specific, impression of trademarks. Although we consider the mark as a whole, “in
articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
As shown above, Applicant’s mark comprises the wording SOZO COFFEE
ROASTING EST. 2006 with a large black, red, and white star on a black rectangular
background. The letter “O” in SOZO has a line through it which makes it look like a
coffee bean. Registrant’s mark is simply the term SOZO in standard characters.
We find that Applicant’s mark incorporates Registrant’s mark in its entirety and
merely adds descriptive wording and a design element. Incorporating the entirety of
one mark within another does not obviate the similarity between the compared
marks, as in the present case, nor does it overcome a likelihood of confusion under
Section 2(d). See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (“[T]he presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical.”); see also China
Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123, (Fed. Cir. 2007) (The
common word in CHI and CHI PLUS is likely to cause confusion despite differences
in the marks’ designs).
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Applicant argues that “although the registered mark does contain a portion of
Appellant’s mark, the noncommon elements distinguishes [Applicant’s mark] enough
in evaluating the differences in appearance, sound and connotation of the marks.”4
We disagree. Regarding the addition of the star design, it is well settled that when
comparing marks the word portion is often considered the dominant feature and is
accorded greater weight in determining whether marks are confusingly similar. In re
Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012).
Regarding, the addition of the descriptive language “EST. 2006” and “COFFEE
ROASTING,” it is equally well settled that descriptive language is less significant in
comparing marks. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (disclaimed descriptive matter is less
significant in determining the dominant and distinguishing element of marks). Here,
we find the term SOZO to be the dominant element of both Applicant’s and
Registrant’s marks.
In appearance, the dominant elements of both marks are identical because the
cited mark is depicted in standard characters and, therefore, may appear in any
typeface including one similar to Applicant’s. See Citigroup Inc. v. Capital City Bank
Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011) (“[T]he
registrant is entitled to depictions of the standard character mark regardless of font
style, size, or color.”). In sound, because the dominant element of each mark, SOZO,
is identical, the marks are pronounced the same. In connotation and commercial

4 Applicant’s Br., p. 4, 7 TTABVUE 4.
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impression, both marks convey the same commercial impression of healthfulness.
Applicant states that the English translation of “Sozo” in the mark is “Wholeness.”
Registrant provided a similar translation, stating the English translation of “SOZO”
is, inter alia, “to make well, heal, restore to health.” Regardless of the exact
translation or whether consumers would be able to translate either mark, it is likely
that consumers would give the same meaning to the term SOZO in both marks. In
sum, when we consider the marks in their entireties in terms of appearance, sound,
connotation and commercial impression, we find them to be similar. This du Pont
factor weighs in favor of a finding of a likelihood of confusion.
B. Similarity of the goods and services, trade channels, and classes of purchasers
We next consider the similarity of Registrant’s goods and Applicant’s services,
keeping in mind that the goods and services of the parties need not be identical or
even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP
§1207.01(a)(i). The respective goods and services need only be “related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that [they] emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)).
Applicant’s services are “Coffee roasting and processing.” Registrant’s goods are
“Coffee based beverages.” The Examining Attorney argues that “[c]offee roasting and
processing and coffee based beverages . . . are of a kind that may emanate from a
Serial No. 86685104
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single source under a single mark.”5 To support the refusal, the Examining Attorney
introduced copies of twenty third-party registrations that serve to suggest that coffee
roasting and processing and coffee based beverages are offered by others under the
same mark. The following examples are representative:6
• Reg. No. 3341878 for the mark ESSELON, in standard characters, for, inter
alia, coffee-based beverages, in International Class 30 and Coffee roasting and
processing, in International Class 37;
• Reg. No. 3438374 for the mark BEANETICS, in standard characters, for, inter
alia, coffee-based beverages, in International Class 30 and Coffee roasting and
processing, in International Class 37;
• Reg. No. 4189508 for the mark JAVATAZA COFFEE and design, for, inter alia,
coffee, in International Class 30 and Coffee roasting and processing, in
International Class 37;
• Reg. No. 4483526 for the mark PARLOR COFFEE, in standard characters, for,
inter alia, coffee based beverages, in International Class 30 and Coffee roasting
and processing, in International Class 37;
• Reg. No. 4704867 for the mark ASCENSION, in standard characters, for, inter
alia, coffee based beverages, in International Class 30 and Coffee roasting and
processing, in International Class 37; and
• Reg. No. 4807263 for the mark DOGWOOD COFFEE CO., in standard
characters, for, inter alia, coffee based beverages, in International Class 30 and
Coffee roasting and processing, in International Class 37.
Although such third-party registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nonetheless have
probative value to the extent they are based on use in commerce and serve to suggest
that the goods and services identified therein are of a kind which may emanate from
a single source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d

5 Examining Attorney’s Br., p. 8, 9 TTABVUE 9.
6 Office Action of October 16, 2015, pp. 7-36.
Serial No. 86685104
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1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993).
The Examining Attorney also introduced excerpts from Applicant’s website
showing that Applicant offers roasted coffee beans as well as individual coffee
beverages.7 In addition, the Examining Attorney introduced excerpts from several
third-party websites to show that Registrant’s coffee-based beverages and Applicant’s
coffee roasting services are related. The most relevant third-party websites are:
• www.jrenecoffee.com – the website of Rene Coffee Roasters describing their
coffee roasting services and offering individual coffee beverages;8
• www.kohanacoffee.com – the website of Kohana Coffee describing their coffee
roasting services and offering roasted coffee beans and individual coffee
beverages;9 and
• www.ptscoffee.com – the website of PT’s Coffee Roasting Co describing their
coffee roasting services and offering a variety of roasted coffee beans and
individual coffee beverages.10
Applicant argues that the difference in Registrant’s goods and Applicant’s services
avoids a likelihood of confusion because the respective purchasers are different:
Appellant’s audience, i.e., the consumers of the goods with
which Appellant’s mark is used, are those individuals and
businesses selecting a provider of coffee roasting. On the
other hand, the registered mark is used in connection with
“coffee based beverages”, the clients being those of the
Registrant for direct sales.11

7 Office Action of February 25, 2016, TSDR pp. 20-21.
8 Office Action of October 16, 2015, TSDR pp. 37-43.
9 Office Action of February 25, 2016, TSDR pp. 6-8.
10 Id. at 10-19.
11 Applicant’s Br. p. 4, 7 TTABVUE 4.
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Applicant’s argument is unpersuasive. The third-party registrations and internet
website evidence demonstrate that entities that roast and process coffee, including
Applicant, also provide a variety of coffee beverages to consumers. Accordingly, we
find that the Examining Attorney’s evidence establishes that coffee roasting and
processing and coffee-based beverages may emanate from a single source.
Considering the channels of trade and classes of purchasers, because the goods
and services are related and contain no limitations, it is presumed that they move in
all channels of trade normal for those goods and services, and that they are available
to all classes of purchasers, including coffee drinkers seeking to purchase roasted
coffee beans in bulk and individual beverages. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). See also
Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are presumed to travel
in all normal channels . . . for the relevant goods.”). In light of the abovementioned
evidence of third-party registrations and websites which demonstrate that the
services identified in both the application and registrations often emanate from the
same source, we find the channels of trade or classes of purchasers to be the same or
similar. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012).
Accordingly, we find the Examining Attorney’s evidence establishes that
Applicant’s services are related to Registrant’s goods, that the respective goods and
services travel in the same trade channels, and they are likely to be purchased by the
same consumers. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re
Albert Trostel, 29 USPQ2d at 1785-86.
Serial No. 86685104
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The du Pont factors relating to the similarity of the goods and services, channels
of trade, and classes of purchasers favor a finding of likelihood of confusion.
C. Consumer sophistication
Applicant argues that there is no likelihood of confusion because consumers of
Registrant’s goods are “sophisticated purchasers who will take care in making
purchasing decision and therefore are not likely to be confused by Appellant’s mark
used in connection with coffee roasting and the Registrant’s mark used in connection
with coffee based beverages.”12 This argument is unpersuasive. First, there is no
evidence in the record that Applicant’s or Registrant’s consumers are, in fact,
sophisticated. Second, coffee, whether sold un-brewed in bulk or as individual drinks,
is not so expensive that consumers would be expected to exercise more than ordinary
care, but would likely buy the goods on impulse. See Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively
low-priced and subject to impulse buying, the risk of likelihood of confusion is
increased because purchasers of such products are held to a lesser standard of
purchasing care.”). This factor also favors a likelihood of confusion.
D. Other Established Fact Probative of the Effect of Use
The thirteenth and final du Pont factor allows for the consideration of any
additional probative facts to accommodate the need for flexibility in assessing each
unique set of facts. Du Pont, 177 USPQ at 567. Such an additional probative fact is
present in this case. Applicant claims ownership of U.S. Registration No. 4066275 for

12 Applicant’s Br. p. 5, 7 TTABVUE 5.
Serial No. 86685104
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the mark SOZO COFFEE ROASTING AND ESPRESSO BAR, in standard
characters, for “Coffee shops,” in International Class 43. Thus, we are presented with
the unusual situation in which Applicant has an existing incontestable registration
for a similar mark for related services which has coexisted with the cited registration
for a number of years.
Applicant’s earlier registration does not compel a different result herein, however,
because the present application is for a different mark and covers services which
differ from the services in Applicant’s earlier registration. In short, Applicant’s earlier
registration for use in connection with “coffee shops” does not entitle Applicant to
register a different mark for “coffee roasting and processing.” See In re Sunmarks
Inc., 32 USPQ2d 1470 (TTAB 1994) (“This Office should not be barred from examining
the registrability of a mark when an applicant seeks to register it for additional goods
as it does here, even when the additional goods are closely related to those listed in a
prior registration.”); see also In Florists’ Transworld Delivery Inc., 106 USPQ2d 1784,
1791-92 (TTAB 2013) (“[I]t is well settled that neither the Board nor our primary
reviewing court is bound by prior determinations by the Office and each case must be
decided on its own merits.” (citing In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001)). Accordingly, the prior registration does not assist
applicant in establishing that there is no likelihood of confusion. This factor is
neutral.
E. Balancing the Factors
In summary, we have carefully considered all of the evidence and arguments of
record relevant to the pertinent du Pont likelihood of confusion factors. Given the
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similarity of the marks, the relatedness of the goods and services and their channels
of trade and classes of consumers, we find that the Office has met its burden in
showing a likelihood of confusion between Applicant’s mark and the cited mark.
F. Failure to show use of the mark in commerce
Next, we turn to the Examining Attorney’s refusal to register the mark because
the specimens do not show use of the mark in commerce in connection with
Applicant’s services. Although applicant does not address this refusal to register in
his briefing of the case, we will not consider the matter to be conceded but rather will
consider the refusal on its merits.
Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), provides that an
application must be accompanied by a specimen of the mark as used in commerce.
According to Section 45, 15 U.S.C. § 1127, a service mark is used in commerce “when
it is used or displayed in the sale or advertising of services.” See also 37 C.F.R.
§ 2.56(b)(2). Such use may be established by: (1) showing the mark used or displayed
as a service mark in the sale of the services, which includes use in the course of
rendering or performing the services, or (2) showing the mark used or displayed as a
service mark in advertising the services, which encompasses marketing and
promotional materials. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB
1992) (an acceptable specimen need not explicitly refer to the services if it “show[s]
use of the mark in the rendering, i.e., sale, of the services”); In re Red Robin Enters.,
222 USPQ 911, 914 (TTAB 1984) (stating that “rendition” of services is properly
viewed as an element of the “sale” of services). A specimen that shows only the mark
with no reference to, or association with, the services does not show service mark
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usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re Duratech Indus.
Inc., 13 USPQ2d 2052, 2054 (TTAB 1989).
Applicant has submitted three specimens: the original specimen and two
substitute specimens. The two substitute specimens are clearly unacceptable
specimens to show use of the mark. The first substitute specimen is unacceptable
because it is simply a copy of the mark and has no context to show how it is used to
advertise Applicant’s services. Similarly, the second substitute specimen is
unacceptable because it does not show the same mark for which Applicant seeking
registration, and because it is simply a coffee cup which does not show use of the
mark in connection with the applied-for services.
The original specimen, submitted with the application, consists of a photograph
showing an individual wearing a t-shirt bearing the mark and making coffee on what
appears to be a bench scale:

Serial No. 86685104
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The application states that the photograph “shows the [mark] printed on a t-shirt,
worn by the owner of the company, currently used in commerce.”
Photographs of costumes or other outfits worn in the performance of services may
suffice to show use of mark in commerce. See Red Robin, 222 USPQ at 914.
Applicant’s services are “coffee roasting and processing.” The person in the
photograph wearing the mark on a t-shirt obviously is not roasting coffee.
Nevertheless, it is likely that coffee “processing” would entail making coffee for
testing or other purposes as the person in the photograph is doing. Moreover, the
mark is associated with the services on the t-shirt itself since the mark has the words
“coffee roasting” in it and the t-shirt is worn by Applicant. We find, therefore, that
Applicant’s original specimens are acceptable to show use of the mark in the course
of rendering or performing the services of coffee roasting and processing. See
Metriplex, 23 USPQ2d at 1316-17 (an acceptable specimen need not explicitly refer to
the services if it “show[s] use of the mark in the rendering, i.e., sale, of the services”).
The refusal to register the mark under Sections 1 and 45, because the specimens do
not show use of the mark in connection with Applicant’s identified services, is
reversed.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed. The refusal to register the mark under Sections 1 and 45
is reversed.