Starbuzz Tobacco, Inc.v.Starbuds Cooperative

Trademark Trial and Appeal Board

Jul 11, 2019

91224065 (T.T.A.B. Jul. 11, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Starbuzz Tobacco, Inc.
v.
Starbuds Cooperative
_____

Opposition No. 91224065
_____

Natu J. Patel and Daniel H. Ngai of The Patel Law Firm, P.C.
for Starbuzz Tobacco, Inc.

Michael G. Atkins of Atkins Intellectual Property, PLLC
for Starbuds Cooperative.
_____

Before Kuhlke, Taylor and Larkin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Starbuds Cooperative, seeks registration of the mark STARBUDS in
standard characters for “Retail apparel stores; Retail store services featuring a wide
variety of consumer goods of others,” in International Class 35.1

1 Serial No. 86496819, filed January 6, 2015, based on an 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 Board entered judgment against Applicant with respect to the “hookah lounge services”
in International Class 41 that were originally included in the application based on Applicant’s
unconsented amendment to delete those services. 31 TTABVUE 3.
Opposition No. 91224065

2

Opposer, Starbuzz Tobacco, Inc., has opposed registration of Applicant’s mark on
the ground that, as used in connection with Applicant’s services, the mark so
resembles Opposer’s previously used and registered marks STARBUZZ, STARBUZZ
HOOKAH LOUNGE, STARBUZZ TOBACCO, and STARBUZZ TOBACCO SINCE
2005 with design, for a variety of goods and services including clothing in
International Class 25, as to be likely to cause confusion under Section 2(d) of the
Lanham Act, 15 U.S.C. § 1052(d). In addition, Opposer asserts the claim that
Applicant’s services are unlawful and therefore Applicant lacks a bona fide intent to
use its mark in lawful commerce under Trademark Act Sections 1 and 45, 15 U.S.C.
§§ 1051 and 1127; and that Applicants mark is deceptively misdescriptive of the
services identified in the application within the meaning of Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1). By its answer, Applicant admits the allegation that
Opposer is the owner of its pleaded registrations and denies the remaining salient
allegations.
I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition. Opposer submitted the testimony declarations of Majda Haddoudi,
Opposer’s CFO, with accompanying exhibits;2 and Antonio R. Sarabia II, an expert
witness, with an accompanying expert report.3 In addition, Opposer submitted

2 42 TTABVUE.

3 37 TTABVUE.
Opposition No. 91224065

3

notices of reliance on, inter alia, Applicant’s discovery responses; the discovery
deposition of Shy Sadis and accompanying exhibits; USPTO Trademark Electronic
Search System (TESS) printouts of its pleaded registrations (3830725, 4146752,
3653296, 3783438, 3736960), which show that the registrations are subsisting and
owned by Opposer;4 (2) TESS printouts of several other registrations (3113110,
4029487, 4032280, 4104682, 4222267, 4343092, 4407315, 4550274, 4554719,
4689369, 4693037, 4741966, 4937532, 5022795, 4766937, 4564539) owned by
Opposer;5 TESS printouts of Applicant’s Registration No. 4766937 for STARBUDS
for hats and t-shirts; a third-party registration for the mark THE JOINT (and design)
for, inter alia, t-shirts, hats and sweatshirts, and providing medical information in
the field of medicinal marijuana; printouts of Applicant’s website displaying its store
front, and other matters; online news articles; screenshots of Applicant’s Instagram
profile, Yelp page and Facebook profile; dictionary definitions of “bud,” “hookah,” and
“420”; printouts from third-party websites; a judicial opinion; and excerpts from
Washington State statutes.6

4 Pleaded registrations may be made of record by submitting “a current copy of information
from the electronic database records of the Office showing the current status and title of the
registration.” Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d).

5 As discussed below, Opposer did not plead these registrations and therefore may not use
them as a basis for the opposition (such as for purposes of removing priority as an issue in
the case, or for proving standing). Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 704.03(b) (2019).

6 38-41, 49-50 TTABVUE.

Opposition No. 91224065

4

Applicant submitted the testimony declaration of Sam Sadis, Applicant’s owner.7
Applicant submitted notices of reliance on, inter alia, dictionary definitions of “buzz”
and “bud”; Applicant’s Registration No. 4766937 (also submitted by Opposer);
printouts of third-party registrations; excerpts from the Revised Code of Washington
and Washington Administrative Code; printout from the FAQ’s from the Washington
State Liquor and Cannabis Board’s website; printouts of third-party websites;
excerpts from third-party registration files showing specimens of use; and printouts
from a third-party cancellation proceeding.8
Opposer and Applicant have lodged objections to certain testimony and exhibits.
Opposer’s objections to testimony and exhibits relating to Applicant’s other
Application Serial No. 86496819 are sustained to the extent that we do not consider
them in connection with the affirmative defense Applicant unsuccessfully sought to
add to this proceeding. 36 TTABVUE (Board order denying Applicant’s motion to
amend to add prior registration defense). We do not strike this material and consider
it for whatever probative value it has with regard to likely confusion. With regard to
Opposer’s registrations submitted during trial but not pleaded, Applicant’s objection
to these registrations is sustained to the extent that we do not consider them for the
purposes of standing, priority or the asserted claims. Harry Winston, Inc. and Harry

7 48 TTABVUE.

8 45-47 TTABVUE. Applicant’s notice of reliance filed on August 29, 2018 (47 TTABVUE) is
a duplicate of the premature notice of reliance submitted on August 3, 2018 (44 TTABVUE)
one day before Applicant’s trial period opened. Opposer did not object to the notice of reliance
filed before the trial period, but did object to the August 29th filing as a duplicate. Opposer’s
objection is overruled, and we refer to the timely filed notice of reliance relied on by Applicant
in its brief.
Opposition No. 91224065

5

Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1424 n. 14 (TTAB
2014); see also FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234,
1236 (TTAB 2014) (registration resulting from opposer’s unpleaded application akin
to third-party registration, and may be made of record through notice of reliance for
purposes other than the basis of the opposition, i.e., for “whatever probative value” it
may have). Similarly, with regard to Applicant’s objection to the expert testimony of
Mr. Sarabia, we do not strike this testimony. Mr. Sarabia presented himself as an
expert in trademarks and opined on 1) whether the marks sound and appear similar,
2) whether they will be used on the same services, 3) whether applicant’s mark is
merely descriptive, and 4) whether there are no other federal applications or
registrations in International Classes 35 or 41 which are similar to STARBUZZ. This
“expert opinion” is not based on being a linguist or some specific knowledge, rather it
is more in the nature of the type of report submitted to courts that do not specialize
in trademark matters. However, in the context of an inter partes proceeding before
the Board it is of little utility because “the Board is responsible for determining
whether the marks are similar, and we will not substitute the opinion of a witness,
even an expert witness, for our evaluation of the facts.” Edwards Lifesciences Corp.
v. Vigilanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).
As to the remaining objections, the Board is capable of weighing the relevance and
strength or weakness of the objected to testimony and evidence, including any
inherent limitations. As necessary and appropriate, we will point out any limitations
in the evidence or otherwise note that the evidence cannot be relied upon in the
Opposition No. 91224065

6

manner sought. In doing so, we have kept in mind the various objections raised by
the parties and we have accorded whatever probative value the subject testimony and
evidence merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d
1477, 1479 (TTAB 2017).
II. SECTION 2(d) CLAIM
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a
preponderance of the evidence, that it has priority with respect to its asserted
STARBUZZ marks vis-à-vis Applicant’s STARBUDS mark, and that Applicant’s use
of its mark in connection with the services identified in its application is likely to
cause confusion, mistake, or deception as to the source or sponsorship of those
services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed.
Cir. 2000).
A. Standing and Priority
Opposer’s pleaded and proven registrations are summarized below:
Registration No. 3830725 for the standard character mark
STARBUZZ HOOKAH LOUNGE (HOOKAH LOUNGE
disclaimed) for “Hookah and smoking lounge services,” in
International Class 41 and “Cafe and restaurant services
*for shisha bars, hookah lounges, vaping bars, and cigar
Opposition No. 91224065

7

lounges*,”9 in International Class 43 issued on August 10,
2010, Section 8 accepted;
Registration No. 4146752 for the standard character mark
STARBUZZ for “Hookahs and Hookah Accessories,
Namely, Hoses, Bowls, Trays and Tongs,” in International
Class 34, issued on May 22, 2012, Section 8 accepted;
Registration No. 3653296 for the standard character mark
STARBUZZ TOBACCO (TOBACCO disclaimed) for “Retail
and wholesale distributorship of tobacco, pipe tobacco,
smoking tobacco, flavored tobacco, molasses tobacco, and
charcoal; Retail and wholesale distributorship of hookahs
and accessories,” in International Class 35, issued on July
14, 2009, Sections 8 and 15 accepted and acknowledged;
Registration No. 3783438 for the mark
(TOBACCO and SINCE 2005 disclaimed) for “Retail and
wholesale distributorship of tobacco, pipe tobacco, smoking
tobacco, flavored tobacco, molasses tobacco, and charcoal;
Retail and wholesale distributorship of hookahs and
accessories,” in International Class 35, issued on May 4,
2010, Section 8 accepted; and
Registration No. 3736960 for the standard character mark
STARBUZZ TOBACCO for “clothing and apparel, namely,
shirts, beanies, [ skirts, ] t-shirts, sweatshirts, sweaters,
jackets, [ coats, ] hats, caps, [ jeans, pants, sweatpants and
socks ],”10 issued on January 12, 2010, Section 8 accepted.
Because Opposer has made its pleaded registrations properly of record, Opposer has
established its standing to oppose registration of Applicant’s mark and its priority is
not in issue with respect to the marks and goods and services in those registrations.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058

9 The * indicates narrowing or clarifying language that was added pursuant to an amendment
under Section 7, 15 U.S.C. § 1057.

10 The goods in brackets were deleted in the Section 8 Declaration of Use.
Opposition No. 91224065

8

(Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);
and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
B. The Parties
Opposer is a manufacturer and distributor of hookah tobacco, electronic cigarettes
and other related products. Haddoudi Decl. ¶ 3, 42 TTABVUE 3. Opposer began
selling tobacco in 2005. Id. ¶ 12, 42 TTABVUE 4. Applicant “owns a store that sells
marijuana and marijuana paraphernalia” in Washington State. Sadis Decl. ¶ 13, 48
TTABVUE 4-5. On January 16, 2012, Applicant “began selling hats and t-shirts
bearing the STARBUDS name on the label and/or hang-tag.” Id. ¶ 2, 48 TTABVUE 2.
Applicant intends to own and operate both brick-and-mortar and online retail stores
for a wide variety of consumer goods, including hats and t-shirts, unconnected to the
sale of marijuana and marijuana paraphernalia. Id. ¶ 13, 48 TTABVUE 5.
C. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). Two key considerations are the similarities between the marks and the
similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). As noted above, Opposer
pleaded and proved several registrations for STARBUZZ formative marks. For
Opposition No. 91224065

9

purposes of our likelihood of confusion analysis, we confine our analysis to Opposer’s
standard character mark STARBUZZ TOBACCO for shirts, beanies, t-shirts,
sweatshirts, sweaters, jackets, hats and caps, in pleaded and proven Registration No.
3736960, summarized above, because if we do not find likelihood of confusion with
respect to the mark and goods in this registration, we would not find it as to the other
pleaded and proven registrations. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
1. Relatedness of the Goods and Services, Channels of Trade, and Classes of
Purchasers
The goods and services do not have to be identical or even competitive in order to
find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498,
1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB
2009). We must consider not whether the actual goods and services are literally the
same, but rather whether the public will be confused as to their source. See Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975); In re Ass’n of
the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007). See also In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding
MARTIN’S for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause
confusion). The nature and scope of a party’s goods or services must be determined
on the basis of the goods or services recited in the application or registration. See, e.g.,
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
Opposition No. 91224065

10

1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
It is well recognized that confusion may be likely to occur from the use of the same
or similar marks for goods, on the one hand, and for services involving those goods,
on the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1052 (Fed. Cir. 2018) (holding DETROIT ATHLETIC CO. for sports apparel retail
services and DETROIT ATHLETIC CLUB for clothing likely to cause confusion); In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding
BIGG’S (stylized) for retail grocery and general merchandise store services and
BIGGS and design for furniture likely to cause confusion); In re Phillips-Van Heusen
Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of clothing
and THE “21” CLUB (stylized) for restaurant services likely to cause confusion); In
re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized)
for retail women’s clothing store services and CREST CAREER IMAGES (stylized)
for uniforms likely to cause confusion); Steelcase, Inc. v. Steelcare, Inc., 219 USPQ
433, 435 (TTAB 1983) (holding STEELCARE INC. and design for refinishing of
furniture, office equipment, and machinery and STEELCASE for office furniture
likely to cause confusion).
Clothing commonly bears the same mark as the retail outlets from which it is sold.
Detroit Athletic, 128 USPQ2d at 1306. Indeed, Applicant “agrees that its intended
‘Retail apparel store’ services are at least somewhat related to Opposer’s ‘Clothing
and apparel’ goods.” 52 TTABVUE 33. It is sufficient for a finding of likelihood of
Opposition No. 91224065

11

confusion if relatedness is established for any item encompassed by the identification
of goods or services within a particular class in the application. Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA
Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). As such, we need not
discuss Applicant’s additional identified services.
With regard to the channels of trade and classes of consumers, because there are
no limitations as to these factors in the identifications in the application and
registration, we must presume that the identified goods and services move in all
normal channels of trade, and that they are available to all classes of purchasers for
those goods and services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading
Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc.,
90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions
or limitations into the registrant’s description of goods.”). Thus, we must presume
that Opposer’s listed types of clothing goods would be sold in retail apparel stores.
Detroit Athletic Co., 128 USPQ2d at 1051 (channels of trade for clothing items
identified in cited registration encompassed applicant’s specific channels of trade).
In view of the above, the du Pont factors of the similarity of the goods and services,
the channels of trade and classes of purchasers favor a finding of likelihood of
confusion.
2. Purchasing Conditions
In considering this factor, we must look at the goods and services as identified and
base our determination on the least sophisticated consumer of the identified goods
and services. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126
Opposition No. 91224065

12

USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based
on the least sophisticated potential purchasers.”)). Because Applicant’s identification
of services is unrestricted and because the clothing items in Opposer’s registration
are also unrestricted, we must assume that these services and goods are sold to
ordinary purchasers who exercise no more than ordinary care in their purchasing
decisions. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no
restriction of price in identifications required Board to consider degree of care
exercised by purchasers of low-cost cosmetics). Opposer does not address Applicant’s
services and only presents evidence in relation to its hookah and tobacco goods.
However, based on the identifications in the application and registration, the class of
consumers for the respective goods and services consists of the general public, namely
all types of consumers. There is no evidence that this segment of the general public
would necessarily exercise a higher degree of care when encountering the goods or
services. Moreover, to the extent some consumers may take more care in their
clothing purchase, as noted above, the standard of care for purchasing the goods is
that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004). Accordingly, we find that this factor is neutral.
3. Fame
Before we compare the marks, we address the fifth du Pont factor, the fame of
Opposer’s mark. In the likelihood of confusion context, fame “varies along a spectrum
from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmount
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). A famous
mark is one that has extensive public recognition and renown. Bose Corp. v. QSC
Opposition No. 91224065

13

Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if
it exists, plays a dominant role in the likelihood of confusion analysis. Kenner Parker
Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992). In view of the extreme deference that is accorded a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the party asserting that its mark
is famous to prove it clearly. The commercial strength of a mark “may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods or services traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.” Bose Corp. v. QSC Audio Prods.,
Inc., 63 USPQ2d at 1305.
Opposer argues that “Starbuzz has become one of the most prominent and well-
known hookah tobacco companies in the world, including in the United States.” 51
TTABVUE 39. Opposer presents evidence supporting increasing marketing
expenditures, and wide marketing channels including trade shows, print ads, annual
catalogs, the Internet and social media. Opposer also points to the approximately
50,000 visits to its website per year since 2015, 36,000 followers on Instagram, 37,000
fans on Facebook, 3,000 followers on Twitter, and thousands of views on YouTube.
Haddoudi Decl., 42 TTABVUE 14, 93-104.
We first observe that the bulk of the evidence presented is in connection with
Opposer’s hookah lounge services and tobacco goods, not its clothing goods. In
addition, the significance and probative value of the social media evidence is not clear.
Opposition No. 91224065

14

A party that introduces testimony or evidence regarding the pervasiveness of its
social media reach should provide an explanation about how it is probative. For
example, there is no testimony as to how many of the social media followers or views
were in the United States; whether the social media account followers overlap; or
whether the Facebook “likes” were from different separate individuals or whether it
includes multiple “likes” from the same individuals for different facets of the
Facebook postings. Finally, while there is evidence of marketing and 50,000 “views”
on its website every year, there is little context to understand how this compares to
others in the industry. Although the STARBUZZ portion of Applicant’s mark is
fanciful and conceptually strong, we find that Opposer has failed to show that its
STARBUZZ TOBACCO mark is so commercially strong for clothing that we should
accord it a broader scope of protection than any other fanciful mark. Nonetheless, we
find that the STARBUZZ TOBACCO mark is inherently distinctive for clothing and
accord it the normal scope of protection to which inherently distinctive marks are
entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1348-49
(TTAB 2017) (citing Joseph Phelps, 122 USPQ2d at 1734). This du Pont factor is
neutral in our likelihood of confusion analysis. 4. Third-party Use of Similar Marks for Similar Goods and Services
Under the sixth du Pont factor, a mark’s commercial strength may be curtailed by
third-party use of similar marks with similar goods or services. Jack Wolfskin
Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). Applicant
Opposition No. 91224065

15

points to several registrations and examples of use for the mark STARBUCKS owned
by a single third-party for a variety of goods including clothing,11 and the use of one
other third party WILLIAM STARBUCK for ties.12
This evidence does not move the dial in any measurable way. First, registrations
are not evidence of use in the marketplace. AMF Inc. v. Am. Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 128, 129 (CCPA 1973) (“The existence of these registrations is
not evidence of what happens in the market place or that customers are familiar with
them nor should the existence on the register of confusingly similar marks aid an
applicant to register another likely to cause confusion, mistake or to deceive.”). Active
third-party registrations may be relevant to show that a mark or a portion of a mark
is descriptive, suggestive, or so common that the public will look to other elements to
distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, 123
USPQ2d at 1751; Jack Wolfskin, 116 USPQ2d at 1136; Juice Generation, 115
USPQ2d at 1674-75.
Here, the record only includes registrations and examples of use by a single third
party with a mark that contains a similar element and one other third party with a
mark that is a person’s full name. In light of the small number of the third-party uses
and registrations of record, we do not find the evidence sufficient to establish that the
common beginning of the parties’ marks, the letters “STARBU,” is in such widespread
use that consumers have come to distinguish marks containing those letters based on

11 45, 47 TTABVUE.

12 45 TTABVUE 73-6.
Opposition No. 91224065

16

minute differences. See i.am.symbolic, 123 USPQ2d at 1751 (stating that evidence of
third-party use for similar goods “falls short of the ‘ubiquitous’ or ‘considerable’ use
of the mark components present in [applicant’s] cited cases”); cf. Jack Wolfskin, 116
USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw
print design elements); Juice Generation, 115 USPQ2d at 1674 (referring to evidence
of “a fair number” of third-party marks).
5. Variety of Goods and Services Sold under Opposer’s Mark
Opposer argues that it uses its mark on a wide variety of goods and services and
in view of the wide range of products offered in connection with the STARBUZZ
marks it is more likely that consumers would believe Applicant’s use of a similar
mark is connected or affiliated with Opposer. For this decision, we may only consider
the wide variety of goods and services used in connection with Opposer’s pleaded
marks as it bears on the STARBUZZ TOBACCO mark. In addition to the clothing
items on which we focus this decision, the record shows this mark being used and
registered in connection with various types of tobacco and retail and wholesale
distributorship of hookahs and accessories. However, here, it has not been shown that
use on these other goods and services makes it more likely that consumers would
believe that Applicant’s retail apparel stores services emanate from Opposer. UMG
Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB 2011). Certainly,
Opposer has registered and used various STARBUZZ formative marks, but Opposer
has not pleaded a family of marks. We find on this record that this factor is neutral.
Opposition No. 91224065

17

6. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark STARBUDS
and Opposer’s mark STARBUZZ TOBACCO when compared in their entireties in
terms of appearance, sound, connotation and commercial impression. Detroit Athletic
Co., 128 USPQ2d at 1048. “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); Steelcase,
219 USPQ at 436. “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). The marks
must be considered in their entireties, but “‘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 consideration of the marks in their
entireties.”’ Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
We begin by finding that STARBUZZ, the first word in Opposer’s mark, is the
dominant portion of the STARBUZZ TOBACCO mark. Detroit Athletic, 128 USPQ2d
1303 (citing Palm Bay, 73 USPQ2d at 1692) (consumers typically notice first word in
mark). The marks are similar in appearance in that they begin with the word star
and the suffixes in STARBUZZ and STARBUDS both begin the letters BU. In
Opposition No. 91224065

18

addition, the first word STARBUZZ in Opposer’s mark and Applicant’s mark
STARBUDS are each comprised of two syllables and eight letters. The difference of
the ending letters ZZ and DS do not present a strong visual dissimilarity. The
addition of the word TOBACCO in Opposer’s mark does present a difference in
appearance. The marks are very similar in sound notwithstanding the presence of
the word TOBACCO in Opposer’s mark in that the only differing letters ZZ and DS
in the words STARBUZZ and STARBUDS may be pronounced and heard similarly.
As to connotation, Applicant argues that the differing suffixes BUZZ and BUDS have
different meanings, and the addition of the word TOBACCO to Opposer’s mark adds
to the differing connotations as well. Specifically, Applicant asserts that the word
TOBACCO “tell[s] consumers that Opposer … sells tobacco [and] Applicant’s
STARBUDS trademark makes no mention of … tobacco and, therefore conveys no
such message.” 52 TTABVUE 31. Applicant points to definitions from Dictionary.com
and Urban Dictionary and contends the term “buzz” is a slang term for “excitement”
or “thrill” indicating Opposer’s tobacco is strong and the “‘buds’ portion of Applicant’s
trademark … mean[s] a host of different things, including parts of a plant, rounded
parts of a body, and shorthand for ‘buddies.’” Id.; 47 TTABVUE 9-18. However, in the
context of the relevant goods and services, clothing items, and retail apparel and
consumer goods stores, the word TOBACCO has only modest source-identifying
significance. In this case, we find that the similarity in appearance and sound
between STARBUZZ TOBACCO and STARBUDS outweigh any perceived differences
in meaning between the marks resulting from the presence of TOBACCO in Opposer’s
Opposition No. 91224065

19

mark, or otherwise. See, e.g., Steelcase, 219 USPQ at 436 (holding that similarities in
appearance and sound between marks could be “more than sufficient to sustain
determinations of likelihood of confusion without reference to similarities or
differences in meaning or connotation” and finding that similarities between
STEELCARE INC. and design and STEELCASE in appearance and sound
outweighed possible perceived differences in the marks in connotation “i.e., care and
maintenance of steel or metal products in applicant’s case and the suggestion of
container-like or case-like products made of steel or metal with respect to opposer’s
marks”). This du Pont factor supports a finding of likelihood of confusion.
7. Actual Confusion
Applicant argues that “Opposer claims it began using its STARBUZZ TOBACCO
trademark for ‘Clothing and apparel,’ specifically including ‘hats’ and ‘t-shirts,’ in
May 2009 [and] Applicant began using its STARBUDS trademark for ‘hats’ and ‘t-
shirts’ in January 2012.” 52 TTABVUE 30. Applicant then asserts that “both parties
have used their respective marks for identical goods – with identical channels of trade
– for more than seven years [without] a single instance of actual confusion.” 52
TTABVUE 40. While the absence of actual confusion may weigh against a finding of
likelihood of confusion under appropriate circumstances, the absence of any reported
instances of confusion is meaningful only if the record indicates a reasonable
opportunity for confusion to have occurred. Barbara’s Bakery, Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007). Applicant contends that there is no evidence of
actual confusion. We first note that the subject application is for retail services, not
clothing, and is based on intent to use. In addition, we have insufficient evidence on
Opposition No. 91224065

20

which to determine whether there have been actual meaningful opportunities for
confusion to occur. See Cunningham, 55 USPQ2d at 1847; Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Finally, evidence of actual
confusion is not necessary to establish a likelihood of confusion. Herbko Int’l Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001). We find this
factor to be neutral.
8. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties’ arguments with respect thereto. In balancing the relevant
factors, we conclude that because the goods and services are related, the trade
channels and classes of customers overlap, and the marks are similar, confusion is
likely.
III. Conclusion
Because Opposer has shown, by a preponderance of the evidence, its standing and
priority, and the existence of a likelihood of confusion, Opposer has established its
claim under Section 2(d). In view of our decision on the likelihood of confusion claim
we do not reach the unlawful use claim. See Multisorb Tech., Inc. v. Pactiv Corp., 109
USPQ2d 1170, 1171 (TTAB 2013) (the Board has “discretion to decide only those
claims necessary to enter judgment and dispose of the case” because its
“determination of registrability does not require, in every instance, decision on every
pleaded claim”).
Decision: The opposition is sustained.