Sansa Corporation (Barbados) Inc.

Trademark Trial and Appeal Board

Jul 5, 2017

No. 86505570 (T.T.A.B. Jul. 5, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 5, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sansa Corporation (Barbados) Inc.
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Serial No. 86505570
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Ryan D. Artis of Riverside Law LLP,
for Sansa Corporation (Barbados) Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Kuhlke, Gorowitz and Coggins,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Sansa Corporation (Barbados) Inc. (“Applicant”) seeks registration on the
Principal Register of the mark KICK in standard characters for “Inhalation devices
composed of a polymeric material for use as an alternative to traditional cigarettes
containing nicotine powder and parts therefore, namely, mouthpieces and carrying
cases specifically adapted for the inhalation device and component parts; Cartridges
sold filled with dry powder nicotine preparations and tobacco substitutes; Flavored
Serial No. 86505570
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and non-flavored dry powder nicotine preparations for use as a tobacco substitute not
for medical purposes; Tobacco substitutes,” in International Class 34.1
The Trademark Examining Attorney refused registration of Applicant’s mark
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 goods, so resembles
the mark KICK in typed drawing form2 registered on the Principal Register for
“cigarettes” in International Class 34,3 owned by Medallion Brands International Co.
(the first Registrant); and the mark KICK in standard characters registered on the
Principal Register for “electronic component in the nature of a drop-in microprocessor
module that regulates power output in electronic tube devices, including in electronic
cigarettes” in International Class 9 and “drop-in microprocessor modules that
regulate power output sold as a component of electronic cigarettes,” in International
Class 34,4 owned by Evolv, LLC (the second Registrant); as to be likely to cause
confusion, mistake or deception. When the refusal was made final, Applicant
appealed and briefs were filed.5 We affirm the refusal to register.

1 Application Serial No. 86505570 was filed on January 16, 2015, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation of a bona fide intention to use the mark in
commerce.

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (April
2017).
3 Registration No. 2625647, issued on September 24, 2002, renewed.
4 Registration No. 4652072, issued on December 9, 2014.
5 Applicant’s brief was due on February 14, 2017 but Applicant “mistakenly believed the
deadline was for two months” and filed its brief two days late on February 16, 2017. Inasmuch
as all briefing has been completed and Applicant’s main brief was only two days late,
Applicant’s request to accept its late-filed brief is granted. We further note that, Applicant’s
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Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list, only
factors that are “relevant and of record” need be considered).
Each of the KICK marks at issue is in typed or standard characters, and each is
used in connection with cigarettes or cigarette-related goods. In view thereof, the
marks are identical “in their entireties as to appearance, sound, connotation and
commercial impression,” and this factor weighs heavily in favor of likelihood of
confusion. 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.
Turning to the du Pont factors of the relatedness of the goods, channels of trade,
and classes of consumers, we base our evaluation on these factors as they are

briefs are not in compliance with Trademark Rules 2.126(a)(1) and 2.142(a)(2) which require
that they must be double-spaced. However, inasmuch as the main brief is only seven pages
and would not exceed the 25-page limit if properly double-spaced, the reply brief is only four
pages and would not exceed the 10-page limit, and briefs assist the Board in reaching a
determination on the merits, we have exercised our discretion to consider them.
Serial No. 86505570
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identified in the registrations and application. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002); and Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming
public may perceive [the respective goods of the parties] as related enough to cause
confusion about the source or origin of the goods and services.’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62
USPQ2d at 1004). It is settled that it is not necessary for the respective goods to be
identical or even competitive in order to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is not whether consumers would
confuse the goods themselves, but rather whether consumers would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Finally, where the marks are
identical the relationship between the goods need not be as close to support a finding
of likelihood of confusion as would be required in a case where there are differences
Serial No. 86505570
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between the marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
The goods in Registration No. 2625647 are “cigarettes.” In support of her assertion
that Applicant’s goods,
Inhalation devices composed of a polymeric material for
use as an alternative to traditional cigarettes containing
nicotine powder and parts therefore, namely, mouthpieces
and carrying cases specifically adapted for the inhalation
device and component parts; Cartridges sold filled with dry
powder nicotine preparations and tobacco substitutes;
Flavored and non-flavored dry powder nicotine
preparations for use as a tobacco substitute not for medical
purposes; Tobacco substitutes
are related to the first Registrant’s “cigarettes,” the Examining Attorney submitted
articles from online publications, printouts of third-party registrations, and printouts
from third-party websites showing: 1) producers of traditional cigarettes are entering
the alternative cigarette market, including some of the larger companies; 2) third-
parties have registered cigarettes (or cigarette rolling paper with hand-rolling
tobacco) and cigarette alternatives under the same mark; and 3) traditional and
alternative cigarettes are offered for sale in the same location. A representative
sample from each category is set forth below.
From online articles:
In Richmond, unlike Raleigh, the tobacco player who
counts politically is Philip Morris, which isn’t as big a
player in e-cigs as Reynolds but is still the biggest seller of
cigarettes in the country. (Daily Press);6

6 (www.dailypress.com) October 1, 2015 Office Action at 7.
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They aren’t such a strange sight anymore, those slim
cylinders about the same size and shape as a cigarette –
only not made of tobacco and paper. E-cigarettes have
gained in popularity since they were introduced to the U.S.
market over the last seven years by companies that are
now largely owned by Big Tobacco – so much so that “vape”
was named the Oxford English Dictionary’s 2014 word of
the year. … The biggest company in the market is
Lorillard, thanks to its 2013 acquisition of two makers of e-
cigarettes and their solutions, which gave it a 49 percent
share of the e-smoking market. Reynolds American has
also been snapping up e-cigarette and e-liquid
manufacturers – and is trying to acquire Lorillard in a
merger that’s still pending. If the merger is approved, the
combined company would be the second-largest tobacco
product manufacturer – and the largest seller of e-
cigarettes. … But e-cigarettes? It’s the wild West – a state
of affairs that is favored by Reynolds and Lorillard, which
have spent a combined $8.4 million lobbying Congress
since January 2013. … Reynolds American advertised its
e-cigarette on television earlier this year, the first time in
decades that a nicotine product had appeared on TV.
(OpenSecrets.org);7
Reynolds Test Markets Vuse E-Cigarette … Reynolds
American – the second largest U.S. tobacco company and
the maker of brands such as Camel, Kool, Winston, Salem,
Pall Mall and American Spirit – is test marketing a new
disposable e-cigarette called Vuse, according to a report in
the Winston-Salem Journal. … Reynolds has been the
leader among Big Tobacco companies in developing
smokeless products for U.S. consumers and could shake up
the e-cigarette industry in interesting ways. In recent
years, Reynolds has released snus as well as tobacco strips
and orbs. They’ve also released a nicotine gum and are test
marketing tobacco pellets and pouches under the Viceroy
brand name. Clearly, Reynolds is staking the future of the
company in large part on smokeless products. (eCig One);8
Marlboro-maker Phillip Morris International has finally
launched the much talked about IQOS, a smokeless

7 (www.opensecrets.org) October 1, 2015 Office Action at 9-10.
8 (ecigone.com) October 1, 2015 Office Action at 13-14.
Serial No. 86505570
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cigarette that has been described as a hybrid between
analogs and electronic cigarettes. The new device uses real
tobacco refills, but instead of burning it to produce
hazardous smoke and tar, it heats it to produce tobacco-
flavored vapor. For many, e-cigarettes have proven to be a
viable alternative to smoking, satisfying their craving for
nicotine through a familiar hand-to-mouth gesture.
However, there are also many smokers who find the taste
of real tobacco so difficult to replace that they continue to
risk their lives by continuing to smoke. They are the ones
Phillip Morris International hopes to sell their new IQOS
smokeless cigarette to. (Vape Ranks);9 and
Lorillard, the third largest cigarette manufacturer in the
US, acquired the e-cigarette company BluCigs … Phillip
Morris International (PMI) announced in December 2013
that it was teaming up with Altria to market electronic
cigarettes and other “reduced risk” tobacco products.
(Tobacco Tactics).10
Third-party use-based registrations:
Registration No. 4665841 for the mark JOYELIFE for,
inter alia, cigarettes, cigarettes containing tobacco
substitutes not for medical purposes, electronic
cigarettes;11
Registration No. 4822910 for the mark CAVA MAN
DEFINIO TUUM LOCUS UNEARTHED FOR YOUR
MANCAVE for, inter alia, cigarette rolling papers, cigars,
electric cigars, electronic cigarettes, hand-rolling tobacco,
leaf tobacco, smokeless tobacco;12
Registration No. 4623941 for the mark DOUBLE
DIAMOND for, inter alia, batteries for electronic
cigarettes, chemical flavorings in liquid form used to refill
electronic cigarette cartridges, cigarettes, roll your own
tobacco, kits for electronic cigarettes containing

9 (vaperanks.com) October 1, 2015 Office Action at 15.
10 (www.tobaccotactics.org) October 1, 2015 Office Action at 19.
11 November 20, 2015 Office Action at 17.
12 November 20, 2015 Office Action at 20.
Serial No. 86505570
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clearomizers, batteries, battery chargers, e-liquid, and
carrying case;13
Registration No. 4765671 for the mark CLOPTIO for, inter
alia, cigarettes, cigarettes containing tobacco substitutes
not for medical purposes, electronic cigarettes;14
Registration No. 4765896 for the mark VIVA-KITA for,
inter alia, cigarettes, cigarettes containing tobacco
substitutes not for medical purposes, electronic
cigarettes;15
Registration No. 4715999 for the mark FLYME for, inter
alia, cigarettes, cigarettes containing tobacco substitutes
not for medical purposes, electronic cigarettes, tobacco;16
Registration No. 4833732 for the mark HEAVEN GIFTS
for, inter alia, cigarettes, electronic cigarettes;17
Registration No. 4850755 for the mark KS KANGSIDE for,
inter alia, cigarettes, cigarettes containing tobacco
substitutes not for medical purposes, electronic
cigarettes;18 and
Registration No. 4855218 for the mark YACYA for, inter
alia, cigarettes, cigarettes containing tobacco substitutes
not for medical purposes, electronic cigarettes.19
Third-party websites:20

13 November 20, 2015 Office Action at 23-24.
14 November 20, 2015 Office Action at 26.
15 November 20, 2015 Office Action at 32.
16 November 20, 2015 Office Action at 35.
17 November 20, 2015 Office Action at 38.
18 November 20, 2015 Office Action at 42.
19 November 20, 2015 Office Action at 45.
20 (www.smokers-mall.com; www.cstoredecisions.com) November 20, 2015 Office Action at
51-57. (www.itgbrands.com; rjrvapor.com) June 9, 2016 Office Action at 2-7.
Serial No. 86505570
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The text on this website includes the following passage:
The brands we want to really focus on are on the front
counter. The remainder we work in next to the cigarette
display.

Serial No. 86505570
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The text on this website includes the following passage:
Vapor is more than just another tobacco category. It’s the
biggest thing to happen to smoking since tobacco.
The online articles and third-party websites reveal how consumers are exposed to
companies that sell both traditional and alternative cigarettes. The third-party
registrations confirm that such products may emanate from a single source under a
single mark. See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009)
(third-party registrations may serve to suggest that the goods listed therein are of a
kind which may emanate from a single source under a single mark) (citing In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)).
Applicant argues that in view of the two cited registrations which have different
owners the “office has already opined that to some degree, there is not a high
likelihood of confusion between cigarette alternative related goods and tobacco
cigarettes.” It is well established that we are not bound by decisions of prior
examining attorneys. In re Davey Prods. Pty, 92 USPQ2d 1198, 1206 (TTAB 2009); In
re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001); In re Sunmarks, Inc., 32 USPQ2d
1470, 1472 (TTAB 1994); In re Nat’l Novice Hockey League, Inc., 222 USPQ 638, 641
(TTAB 1984).
Serial No. 86505570
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Applicant also argues that based on a federal regulation the first Registrant is
prohibited from selling its cigarettes and, “unless the Registrant is running afoul of
federal law and the FDA rule,” its cigarettes would have been off the market for at
least three or more years and has been effectively abandoned. 5 TTABVUE 6. Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b) provides that a certificate of
registration on the Principal Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the mark in commerce in connection with the goods or services
specified in the certificate. During ex parte prosecution, an applicant will not be heard
on matters that constitute a collateral attack on the cited registration (e.g., a
registrant’s nonuse of the mark). See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360,
1363 (TTAB 2007); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).
As to channels of trade, the record also reveals that traditional cigarettes and
alternative cigarettes are sold in the same channels of trade and offered to the same
classes of consumers. In view thereof, the du Pont factors of the relatedness of the
goods, and the overlap in channels of trade and classes of customers favor a finding
of likelihood of confusion as to the first Registrant’s registration.
The goods in Registration No. 4652072 are “electronic component in the nature of
a drop-in microprocessor module that regulates power output in electronic tube
devices, including in electronic cigarettes” and “drop-in microprocessor modules that
Serial No. 86505570
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regulate power output sold as a component of electronic cigarettes.” In support of her
position that the second Registrant’s goods are related to Applicant’s goods, the
Examining Attorney first shows that the second Registrant’s goods “are available
both as a component part of an electronic cigarette and as a stand-alone accessory
product.” 7 TTABVUE 13. An excerpt from Vaping Guides describes the Kick product
as follows:21
The Kick by Evolv Review … The Kick by Evolve is a simple
way to enjoy variable voltage using an existing mod. The
Kick is not an electronic cigarette, but rather an additional
module that allows any 18650 battery with an 18500 or
18490 battery topped off by the Kick and begin enjoying all
the vapor variable voltage has to offer! … Conclusion …
The Kick is a well designed and well packaged
enhancement for an electronic cigarette that would
otherwise not be capable of providing variable voltage. …
It could also be very attractive to do-it-yourself types who
have the desire to create their own personal mod but are
not ready to dabble in the electronics necessary to produce
variable voltage.
In view thereof, Applicant’s argument that the respective goods and channels of
trade are distinct in that the second Registrant’s goods are only purchased by
manufacturers is contradicted by the record. Moreover, there are no limitations as to
channels of trade in the descriptions of goods in the application or cited registration;
therefore, we presume that parties’ goods move in all channels of trade normal for
those goods. See Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). In addition, the record reveals that “[a]lternative cigarette providers are the

21 (www.vapingguides.com) June 6, 2016 Office Action at 11-14.
Serial No. 86505570
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source of a wide variety of parts and accessories for alternative cigarettes.” 7
TTABVUE 14. In one example, VAPORFI “provides alternative cigarettes, dry herb
vaporizers, rebuildable atomizers [RBAs] to vaporize e-liquids, chargers, bolt tank
drip tips and coils.” 7 TTABVUE 14.22 In another example, NJOY “provides electronic
cigarettes along with vape tanks, custom e-liquids, batteries and carrying cases.” Id.23
Thus, consumers are exposed to various alternative cigarettes and parts and
accessories for them marketed under the same name from the same party on the same
website.
The fact that Applicant’s dry powder inhalers would not be compatible with
Registrant’s electronic microprocessor module does not mandate a finding that the
goods are not related. Goods need not be directly competitive or compatible for likely
confusion. Shell Oil Co., 26 USPQ2d at 1689 (“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source.”). Here, the goods target the same
consumers, smokers who are seeking alternatives to traditional cigarettes.
Applicant’s KICK dry powder nicotine inhalers can serve as a replacement or
alternative to e-cigarettes and their accessories, including a microprocessor
component.

22 (www.vaporfi.com) June 9, 2016 Office Action at 18-26.
23 (www.njoy.com) June 9, 2016 Office Action at 28-35.
Serial No. 86505570
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In view of the above, the du Pont factors of the relatedness of the goods, and the
overlap in channels of trade and classes of customers favor a finding of likelihood of
confusion as to the second Registrant’s registration.
As to both registrations, Applicant argues that confusion is not likely because
these products are not subject to impulse purchases and “[f]urther consideration is
given to the purchase since the purchaser often has a goal switching over from a
traditional cigarette ... or for switching over from a different alternative cigarette
technology.” 5 TTABVUE 5. There is nothing in the record to suggest that the
purchasing process for cigarettes, traditional or alternative, or e-cigarette accessories
is subject to the heightened level of care that likely confusion is obviated. In fact, as
recognized by Applicant’s argument, purchasers of traditional cigarettes may look for
an alternative cigarette as a replacement for the traditional cigarette. Upon
encountering an alternative cigarette, such as a nicotine inhaler, with the identical
mark of a traditional cigarette or e-cigarette accessory, confusion is likely to result.
Balancing of Factors
In conclusion, because the marks are identical, the goods are related, and the
channels of trade and consumers overlap, we find that confusion is likely between
Applicant’s mark KICK and the first and second Registrants’ marks KICK.
Decision: The refusal to register Applicant’s mark is affirmed.