Sally J. Coxe

Trademark Trial and Appeal Board

Jun 27, 2008

No. 78877323 (T.T.A.B. Jun. 27, 2008)

Mailed: June 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sally J. Coxe
________

Serial No. 78877323
_______

William L. Bartow of DLA Piper US LLP for Sally J. Coxe.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Rogers, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Sally J. Coxe, applicant, has filed an application to
register the mark BONOBO BREW (in standard character form)
for goods ultimately identified as “coffee sold in
connection with raising funds for, and awareness of, the
Bonobo and its habitat” in International Class 30 and “beer
sold in connection with raising funds for, and awareness
of, the Bonobo and its habitat” in International Class 32.1

1 Application Serial No. 78877323, filed May 5, 2006, alleging
first use on January 10, 2005 and first use in commerce in
February, 2006 under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78877323
2
In response to a request from the examining attorney,
applicant disclaimed the word BREW.
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 so resembles the mark BONOBO’S registered
(in typed form) for “naturally grown and organic foods,
namely dried and frozen fruits and vegetables; edible oils,
namely coconut oil, olive oil and nut and seed oils; nut
and seed butters; nut and seed crisps” in International
Class 29, “crackers, cookies, cakes and ice-cream” in
International Class 30, “naturally grown and organic
agricultural products, namely fresh fruits, vegetables,
nuts and seeds” in International Class 31, and “restaurant
services” in International Class 43, that, when used with
its identified goods, applicant’s mark is likely to cause
confusion, mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. We reverse the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

2 Registration No. 3000676, issued September 27, 2005.

Serial No. 78877323
3
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,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With regard to the first du Pont factor, i.e., whether
applicant’s mark BONOBO BREW and registrant’s mark BONOBO’S
are similar or dissimilar when compared in their entireties
in terms of appearance, sound, connotation and commercial
impression, we find that the marks are similar.
The analysis is not whether the marks can be
distinguished when compared side-by-side. Rather, we must
determine whether the marks are sufficiently similar that
there is a likelihood of confusion as to source and, in
making this determination, we must consider the
recollection of the average purchaser who normally retains
a general, rather than specific, impression of trademarks.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). Further, while it is correct that we must
view the mark in its entirety, Kangol Ltd. v. KangaROOS
Serial No. 78877323
4
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992),
it is also well settled that “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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 753 F.2d 1056,
1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).
The word BONOBO in applicant’s mark dominates over the
disclaimed word BREW. The dominant portion of applicant’s
mark, BONOBO, is virtually identical to registrant’s mark,
BONOBO’S, and retains the same meaning, that of an “ape of
north-central Congo, having black hair and more arboreal
habits than the common chimpanzee.” The American Heritage
Dictionary of the English Language (4th ed. 2006).3 The
disclaimed word BREW in applicant’s mark and the possessive
form of registrant’s mark are not differences sufficient to
distinguish the marks.
In view thereof, we find that the marks BONOBO BREW
and BONOBO’S are similar in sound, appearance, connotation
and commercial impression. Thus, the factor of the

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial No. 78877323
5
similarity of the marks favors a finding of likelihood of
confusion.
We turn then to a consideration of the goods and
services identified in the application and the cited
registration. It is well settled that goods and services
need not be similar or competitive in nature to support a
finding of likelihood of confusion. The question is not
whether purchasers can differentiate the goods and services
themselves, but rather whether purchasers are likely to
confuse the source of the goods and services. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider the cited
registrant’s goods and services as they are described in
the registration and we cannot read limitations into those
goods and services. See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
and Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the
cited registration describes goods and services broadly,
and there is no limitation as to the nature, type, channels
of trade or class of purchasers, it is presumed that the
registration encompasses all goods and services of the type
described, that they move in all channels of trade normal
for these goods and services, and that they are available
Serial No. 78877323
6
to all classes of purchasers for the described goods and
services. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). Finally, it is well established that goods and
services may be related. See In re United Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986) (mark for
distributorship services in the field of health and beauty
aids held likely to be confused with mark for skin cream).
The examining attorney argues that applicant’s goods
and registrant’s goods and services “serve related purposes
and likely appear in the same channels of commerce” and
that the “parties’ products serve the same general human
needs for nourishment and human desire for culinary
enjoyment.” Br. p. 9. In addition, the examining attorney
argues that “applicant’s goods are within the reasonable
field of expansion typically accorded registrants.” Id.
Further, he contends that:
the registrant produces a wide variety of foods
and operates restaurants [and c]onsumers would
expect that an entity providing whole lines of
foods could easily expand their product lines to
include additional foods or beverages. The
registrant’s goods appear to focus on natural and
organic ingredients, and the registrant could
extend this product philosophy to beverages like
coffee and beer as well. By affording the
registrant a logical zone of expansion, the
relationship between the registrant and
applicant’s goods becomes clearer.”

Br. p. 10.
Serial No. 78877323
7
Finally, he argues that “[g]iven [that] the scope of
the term ‘restaurant’ includes beverages, it is reasonable
that the registrant serves, or could come to serve,
beverages like the applicant’s coffee and beer in its
course of business. Therefore, the registrant’s restaurant
services, like its goods, are also related to the
applicant’s goods.” Br. p. 11. In support of his
position, the examining attorney submitted excerpts from
registrant’s online menu for the restaurant which includes
a listing of “beverages” (for example, young Thai coconut
water, pressed sugar cane juice, pressed fruit juices
du jour, and warm lemon ginger or mint tea).
Addressing the requirement to show “something more”4 in
making a connection between applicant’s coffee and beer and
registrant’s restaurant services, the examining attorney
states:
The registrant produces goods beyond simply
providing restaurant services. This fact affords
the registrant the opportunity to expand its
products into related fields. At the same time,
the presence of goods in the registration causes
the relatedness analysis in this case to concern
more than merely the applicant’s goods and the
services provided by the registrant. Finally,

4 In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003) citing Jacobs v. International Multifoods Corp.,
668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (fact that
restaurants serve food and beverages not enough to find food and
beverages related to restaurant services, rather a party must
show something more than that similar or even identical marks are
used for food products and for restaurant services).
Serial No. 78877323
8
the fact that the registrant’s restaurants
provide brewed beverages establishes the
“something more” requirement to which the
applicant refers. As the applicant notes,
“‘something more’ than a mere conflict between a
use on food and a use on restaurant services is
needed, such as use on a food product of the type
likely to be marketed by a restaurant.”
Applicant’s Br. at 3. [Emphasis added] This case
presents the “something more” in two ways. The
registrant also produces goods, and those goods
are related to the applicant’s. And the
applicant’s coffee and beer are goods of the type
likely to be marketed by the registrant’s
restaurants.

Br. p. 15. [Emphasis in original]
The examining attorney attempts to distinguish In re
Coors Brewing Co. by stating that, in addition to beer, the
applicant here also provides coffee, which is often sold in
all classes of restaurants and without clear branding. In
addition, the examining attorney notes that in this case
the registration includes both restaurant services and
goods. Thus, the examining attorney argues:
...the difference here is that the cited
registrant already produces goods under a house
label, and is therefore entitled to reasonable
expansion for goods related to its identified
goods or of the type it would serve in its
restaurants...Here, the issue is the rather
simpler one of whether it is likely that the
registrant would reasonably expand its existing
house label for goods to coffee or beer goods.

Br. p. 16.
While the examining attorney argues that beer and
coffee are related to registrant’s goods, there is no
Serial No. 78877323
9
evidence in the record to support this argument or even to
support the position that beer and coffee are within
registrant’s logical zone of expansion. We do not find the
listed goods in the registration to be such a broad product
line that registrant could naturally expand to such diverse
products as coffee and beer. As to the restaurant
services, the only evidence of record tends to undercut the
examining attorney’s argument inasmuch as coffee and beer,
although ubiquitous on restaurant menus, are noticeably
absent from registrant’s menu. In fact, based on the
excerpts of record it is hard to imagine registrant serving
coffee or beer. The following excerpt from registrant’s
website describes the inspiration for the registrant’s
cuisine:
...Instinct is responsible for their diets
instead of social custom and food manufacturers.
Their diet is predominantly raw, wild and plant
based: fruits, vegetables, nuts and seeds.
Since there is so much discussion about the
correct diet for humans, bonobos can give us
tremendous insight into what we are meant to eat
and what kind of lifestyle we should have. In
fact humans for millions of years had the same
diet. The cooked-food animal-based diet is very
recent in history and its rise parallels the rise
of degenerative disease and related challenges.

February 25, 2008 Office Action Attachment 6. See also
February 25, 2008 Office Action Attachment 4 (“Bonobo’s
Restaurant is New York City’s newest and most spectacular
Serial No. 78877323
10
Vegetarian Restaurant. Bonobo’s offers the most delicious,
nutritious and eco-friendly food choices on the planet.”)
As stated by the Court of Appeals for the Federal
Circuit:
It is not unusual for restaurants to be
identified with particular food or beverage items
that are produced by the same entity that
provides the restaurant services or are sold by
the same entity under a private label. Thus, for
example, some restaurants sell their own private
label ice cream, while others sell their own
private label coffee. But that does not mean
that any time a brand of ice cream or coffee has
a trademark that is similar to the registered
trademark of some restaurant, consumers are
likely to assume that the coffee or ice cream is
associated with that restaurant. The Jacobs case
stands for the contrary proposition, and in light
of the very large number of restaurants in this
country and the great variety in the names
associated with those restaurants, the potential
consequences of adopting such a principle would
be to limit dramatically the number of marks that
could be used by producers of foods and
beverages.

In re Coors, supra at 1346 citing Jacobs v. International
Multifoods Corp., supra at 642 (CCPA 1982).
Based on this record, we cannot find that the involved
goods are related or that applicant’s goods are related to
registrant’s restaurant services. The fact that the cited
registration includes restaurant services and certain food
items which are not related to applicant’s coffee or beer,
is not sufficient to conclude that applicant’s goods are
related to or within the zone of expansion of registrant’s
Serial No. 78877323
11
goods or services. Moreover, the expansion of trade
doctrine has limited application in an ex parte proceeding.
See In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581,
1584 (TTAB 2007), citing In re General Motors Corp., 196
USPQ 574 (TTAB 1977).
In view of the above, we find that the examining
attorney has not established that applicant’s coffee and
beer sold in connection with raising funds for and
awareness of the Bonobos are related to registrant’s
organic dried, frozen and fresh fruits, vegetables, nuts
and seeds, oils, butters, crackers, cookies, cakes, ice-
cream, and restaurant services, and the du Pont factor of
the similarity of the goods and services does not weigh in
favor of a finding of likelihood of confusion.
As to the channels of trade, applicant argues that its
goods “will be sold in specific and recognizable channels
of trade such that the coffee and beer are sold in
connection with raising funds for, and awareness of, the
Bonobo and its habitat.” Reply Br. p. 5. Applicant also
states that its “goods are to be sold in supermarkets and
through BCI [Bonobo Conservation Initiative] itself.” Br.
p. 19. However, because the identification of goods in the
registration is not limited to any specific channels of
trade it is possible that applicant’s goods and
Serial No. 78877323
12
registrant’s goods could be sold in the same store.5
However, “[a] wide variety of products, not only from
different manufacturers within an industry but also from
diverse industries, have been brought together in the
modern supermarket for the convenience of the customer.
The mere existence of such an environment should not
foreclose further inquiry into the likelihood of confusion
arising from the use of similar marks on any goods so
displayed.” Federated Foods, supra at 29. There is no
evidence in the record to support a finding that such items
(coffee and beer, and crackers, nuts, oils, dried, frozen
and fresh fruits and vegetables) would be in close
proximity to each other or are complementary in a manner
that would imply some relationship as to source. As to the
restaurant services, it is true that coffee and beer are
often served in restaurants, and to that extent the
channels of trade could overlap, but with applicant’s
qualifying language that these goods are only sold in
connection with fundraising activities it is less likely
that such overlap would occur.

5 Applicant’s argument that the “evidence shows that the only
channel of commerce for the Registrant’s goods is its restaurant”
(Br. p. 5) is unavailing inasmuch as we must make our
determination based on the identification of goods and there is
no limitation as to trade channels for registrant’s goods.
Hewlett Packard, supra.

Serial No. 78877323
13
As to the conditions of sale, although applicant
argued that the potential purchasers of the involved goods
and services would be sophisticated, we do not believe the
record supports such a finding and find this factor to be
neutral in our analysis.
In conclusion, because we find that the goods and
services are not related, despite the marks being similar
and some overlap in the channels of trade, confusion is not
likely between applicant’s mark and the mark in the cited
registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is reversed.