Rum & Spirits Corp

Trademark Trial and Appeal Board

Jan 12, 2018

No. 86873768 (T.T.A.B. Jan. 12, 2018)

Mailed: January 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rum & Spirits Corp.
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Serial No. 86873768
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Aileen E. Vázquez-Jiménez and Samuel F. Pamias, Hoglund & Pamias, P.S.C.,
for Rum & Spirits Corp.
Leslee Friedman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Wellington, Adlin, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Rum & Spirits Corp. seeks registration on the Principal Register of the
following mark:

This Opinion Is Not a
Precedent of the TTAB
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for “liqueurs, rum and rum creams excluding candy and ice cream products” in
International Class 33.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), finding a likelihood of confusion with the mark
CAÑAVERAL, registered in standard characters for “candy, chewing gum, ice cream,
flavored and sweetened gelatins, honey, pasta, pasta shells, noodles, rice, tortillas,
tortilla chips, corn chips, salsa, cheese sauce, tomato sauce, spices, and processed
herbs; sugar,” in International Class 30.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed and requested reconsideration. The Examining Attorney denied the request
for reconsideration, and the appeal resumed. We affirm the refusal to register.
I. 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);

1 Application Serial No. 86873768, filed January 13, 2016, based on Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b). The application states that the English translation of “Cañaveral” in the
mark is “sugar-cane field.” The application includes the following description of the mark:
“The mark consists of a red circle with the letter C inside written in white color with gray
shades. The circle is surrounding [sic] by a red semi-broken line with the space between the
circle and the line in white and gray shadows. Underneath is found the word Cañaveral
written in stylized black letters. All other white shown in the drawing is background and not
part of the mark.” The colors red, black, white and gray are claimed as features of the mark.
2 Registration No. 3469777, issued July 15, 2008; combined declaration under Section 8 and
15 of the Trademark Act, 15 U.S.C. §§ 1058 and 1065, accepted and acknowledged January
14, 2014. The registration states that the foreign wording in the mark translates into English
as “cane plantation.”
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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 or services.
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. Similarity of the Marks
The first du Pont likelihood of confusion factor 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).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB
2015).
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On the other hand, 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,
provided the ultimate conclusion rests on a consideration
of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark features as its dominant element the entirety of the cited mark,
the identical term CAÑAVERAL. Applicant’s mark incorporates only one additional
element, the letter “C” in a red circular design. Although we assess each mark in its
entirety, wording often is considered the dominant feature of a mark comprising both
literal and design elements. See Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016); In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012). That is the case here, because consumers
are likely to view the word CAÑAVERAL as indicating the source of Applicant’s
goods, not the “C” design , a logo which emphasizes the word
CAÑAVERAL. Indeed, the literal component CAÑAVERAL is likely to be used alone
in text and when spoken by purchasers requesting the goods. Viterra, 101 USPQ2d
at 1911. For these reasons, we do not agree with Applicant that the design element
is the dominant feature of its mark, despite its relative size. See Appeal Brief at 11,
6 TTABVUE 12.
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Moreover, because the cited mark is registered in standard characters, it is not
limited to any particular font style, size, or color. Trademark Rule 2.52(a), 37 C.F.R.
§ 2.52(a). Therefore, Applicant’s comparison of its mark and Registrant’s mark as
actually used in commerce – with accompanying graphics – is immaterial. Appeal
Brief at 11-14, 6 TTABVUE 12-15. Registrant may display its mark in script similar
to Applicant’s, and in a red, black, white and gray color scheme. Furthermore, here,
as in many cases, Applicant’s incorporation of Registrant’s entire mark increases the
similarity between the two. See, e.g., Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (finding applicant’s mark GIANT
HAMBURGERS and design confusingly similar to opposer’s marks incorporating the
word GIANT); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1247-48 (finding mark
consisting of the word MAX and a column design confusingly similar to registered
mark MAX); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(finding applicant’s mark VANTAGE TITAN confusingly similar to registered mark
TITAN).
In short, notwithstanding the design component of Applicant’s mark, which
distinguishes it somewhat visually from the registered mark, we find the sound,
connotation, and overall commercial impression of the two marks considered as a
whole to be highly similar. The first du Pont factor thus weighs heavily in favor of a
finding that confusion is likely.
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B. Similarity of the Goods
The second du Pont factor is the similarity of the goods. We must look to the goods
as identified in the involved application and cited registration, not to any extrinsic
evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Likelihood of confusion may be found
with respect to a particular class based on any item within the identification of goods
for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Registrant’s goods include, in most relevant part, candy and ice cream. The subject
application, as originally filed, identified “liqueurs, rum and rum creams.” After final
refusal, in its request for reconsideration, Applicant amended the description by
adding “excluding candy and ice cream products,” which Applicant contended “dispels
any similarity and/or relation between the parties’ goods.”3 The Examining Attorney
disagrees, arguing that “[l]iqueurs, rums, and rum creams are commonly used as
flavorings in candy and ice cream.” Examining Attorney’s Brief, 8 TTABVUE 7. The
Examining Attorney did not expressly accept or reject this amendment in her denial
of reconsideration, but characterized it as “not persuasive,” 4 TTABVUE 3, and did
not reference it in her brief on appeal. We accept the amendment and find that it
raised no new issue under TMEP 715.04(a) (October 2017).

3 Request for Reconsideration at 2, TSDR 3.
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The Examining Attorney submitted website printouts demonstrating three
examples of candy and alcoholic beverages sold under the same mark. These are:
• GODIVA Chocolate Liqueurs from Godiva Chocolatier, Inc.;4
• TORTUGA Chocolate Rum Turtles with Sea Salt, which contain TORTUGA
rum;5 and
• MALIBU Coconut Rum Liquor Filled Chocolates, filled with MALIBU
“Caribbean rum with coconut liqueur.”6
The Examining Attorney also submitted a printout from Yelp.com in which a Seattle
user asked: “Does anybody know where I can buy liquor filled chocolates downtown?”
and received more than a dozen responses, some specifically referencing chocolates
filled with rum or KAHLÚA, BAILEYS, or GRAND MARNIER liqueur.7
This evidence supports a finding under the second du Pont factor that consumers
are likely to believe liqueurs and rum on the one hand and candy on the other may
emanate from a common source. This is particularly true for marks as similar as
CAÑAVERAL and , comprising the identical distinctive term
CAÑAVERAL. See, e.g., In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009)

4 May 2, 2016 Office Action at TSDR 5-10 (from godivaliqueurs.com/ and godiva.com/
chocolate-truffles).
5 Id. at TSDR 11-12 (from tortugarumcakes.com/tortuga-chocolate-rum-turtles-with-sea-
salt.html and ultimaterumguide.com/tortuga-rum).
6 Id. at TSDR 13-18 (from candywarehouse.com/flavors/liquor-candy/products/malibu-
coconut-rum-liquor-filled chocolates-72-piece-box/ and maliburumdrinks.com/us/Products).
7 November 17, 2016 Final Office Action at 2-5 (from yelp.com/topic/seattle-does-anybody-
know-where-i-can-buy-liquor-filled-chocolates-downtown).
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(“[T]he greater the degree of similarity between the applicant’s mark and the
registered mark, the lesser the degree of similarity between the applicant’s goods and
registrant’s goods that is required to support a finding of likelihood of confusion.”).
Applicant’s amendment to exclude candy and ice cream products does not
diminish the likelihood of consumer confusion. Registrant has a prima facie right to
use the mark CAÑAVERAL for candy, which encompasses candy containing rum or
liqueur. Consumers will not be aware of the existence of the exclusionary language
in the application and may believe that any such candies offered by Registrant are
made with Applicant’s liqueur, rum or rum cream. Based on this record, we find candy
to be sufficiently related to rum and liqueur that, if the products are offered under
similar marks, consumers will believe that they emanate from a single source.8 The
second du Pont factor also supports a finding that confusion is likely.
C. Channels of Trade and Prospective Customers
The third du Pont factor is the similarity or dissimilarity of established, likely-to-
continue trade channels, while the fourth factor is the conditions under which and
buyers to whom sales are made. With respect to the third factor, we find the evidence

8 Applicant argues that its goods are in a different class from Registrant’s, and thus
“completely different in terms of their type, contents, and presentation.” Appeal Brief at 17,
6 TTABVUE 18. Classification, however, is not a factor in our analysis. The classification of
goods and services by the USPTO is a purely administrative determination that has no
bearing on the issue of likelihood of confusion. Trademark Act Section 30, 15 U.S.C. § 1112
(“The Director may establish a classification of goods and services, for convenience of Patent
and Trademark Office administration, but not to limit or extend the applicant’s or
registrant’s rights.”); Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed.
Cir. 1993) (stating that classification is “wholly irrelevant to the issue of registrability under
section 1052(d), which makes no reference to classification”).
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submitted by the Examining Attorney to show that the respective identified goods
are sold through the same trade channels insufficient to support a finding of likely
confusion. We are mindful that none of the examples of record of candy and rum or
liqueurs sold under the same mark are from the same website.9 Although five of the
individual responses in the Yelp.com evidence cited supra indicated that liquor-filled
chocolates could be purchased at liquor stores in downtown Seattle,10 only two
website printouts of record are from businesses indicating they sell both liquor and
candy,11 while the other three are for general grocery stores selling liquor.12
Considering the record as a whole, although there is some supporting evidence, much
of it is inadequately specific to persuade us that the respective identified goods travel
through similar trade channels. The third du Pont factor therefore is neutral.
Concerning the fourth factor, Applicant contends that: “Clearly, due to the very
nature of the goods at hand they will be sold through different channels of trade and
will target different prospective customers.” Appeal Brief at 19, 6 TTABVUE 20.
Applicant submitted no supporting evidence, but its argument is grounded in part in
the fact that alcoholic beverages are intended for sale only to adults, while food
products are not. There is no evidence, however, that consumers of Registrant’s goods

9 See May 2, 2016 Office Action at TSDR 5-18, cited at nn.4-6 supra.
10 Id. at 2-5 (from yelp.com/topic/seattle-does-anybody-know-where-i-can-buy-liquor-filled-
chocolates-downtown).
11 November 17, 2016 Final Office Action at TSDR 6-7 (from gatewaycandy.com/ and berniers
liquors.com/index.php?link=lottery).
12 Id. at TSDR 8-13 (from visitashland.com/member/super-h-foods/, gianteagle.com/Grocery-
Store/Beer-Wine-Spirits/ and jacksonwholegrocer.com/departments/beverage).
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and Applicant’s goods are otherwise limited beyond the general adult population that
consumes alcohol. We find the fourth du Pont factor neutral.
II. Conclusion
We have found that the critical first and second du Pont factors favor a likelihood
of confusion while the third and fourth factors are neutral. The evidence establishes
that consumers are exposed to candy made with rum and liqueurs, and that these
candies are sold under the same marks as the rum and liqueur they contain. To the
extent that any other du Pont factors may be applicable, we treat them as neutral.
We find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 3469777 when used in association with the goods identified in the
application.
Decision: The refusal to register under Trademark Act Section 2(d) is affirmed.