Top Tobacco L.P.

Trademark Trial and Appeal Board

May 28, 2013

No. 85289829 (T.T.A.B. May. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Top Tobacco L.P.
_____

Serial No. 85289829
_____

Antony J. McShane of Neal, Gerber & Eisenberg LLP for Top Tobacco L.P.

John M.C. Kelly, Trademark Examining Attorney, Law Office 117 (Brett J. Golden,
Managing Attorney).
_____

Before Bucher, Taylor, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Top Tobacco L.P. (applicant) filed an application for the mark SEVILLE for:
cigarette making machines in Class 7; and
tobacco; cigarette papers; cigarette filters; cigarette tubes;
cigarette rolling machines; hand-held machines for
injecting tobacco into cigarette tubes; kits for making
cigarettes comprised primarily of tobacco, cigarette tubes,
and hand-held machines for injecting tobacco into
cigarette tubes; kits for making cigarettes comprised
primarily of tobacco, cigarette paper, cigarette filters and
cigarette rolling machines in Class 34.1

1 Application Ser. No. 85289829, filed on April 8, 2011, based on intent-to-use, Section 1(b)
of the Trademark Act.
Serial No. 85289829

2

Registration was refused on the ground of likelihood of confusion under
Section 2(d) of the Trademark Act, with the marks SEVILLE and design for
cigarettes2 and DON SEVILLE for cigars,3 in Registration Nos. 1927969 and
1990029, respectively, which are owned by different parties. A final refusal issued
with respect to the DON SEVILLE registration on February 7, 2012. Top Tobacco
L.P. (applicant) has appealed the refusal.
Our determination of the issue of likelihood of confusion 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 & 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).
Applicant primarily argues that since the cited registration for the mark
DON SEVILLE for cigars co-existed with the previously cited, but now cancelled,
registration for the mark SEVILLE and design for cigarettes,4 it can also co-exist
with applicant’s registration of the mark SEVILLE for tobacco and cigarette rolling
paraphernalia. Applicant’s contention presumes that the prior registration of a
particular term should be of some persuasive authority in handling later
applications involving similar marks. However, we are not privy to the record of the
prior proceeding and are bound to make a decision based on the record before us.

2 Reg. No. 1927969 issued on October 17, 1995; cancelled under Section 18 on July 11, 2011.
3 Reg. No. 1990029 issued on July 30, 1996; renewed July 31, 2006.
4 Top Tobacco, L.P. petitioned to cancel Reg. No. 1927969 (Cancellation No. 92054002).
Respondent, Philip Morris USA Inc. filed a voluntary surrender under Section 7(e) of the
Trademark Act of Reg. No. 1927969, causing judgment to be entered against respondent.
.
Serial No. 85289829

3

See AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973);
In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); and In re Sunmarks
Inc., 32 USPQ2d 1470 (TTAB 1994). Furthermore, the previously-registered
composite mark, which is set forth below included prominent imagery suggesting a
violin, clarinet, flute and musicians.

Turning then to the merits of this case, we first consider the goods. The
examining attorney maintains that the goods are closely related because they are
all products for the same consumers, namely, tobacco users and smokers, and are
available in the same trade channels. In support of his position, the examining
attorney submitted copies of more than 40 third-party registrations each of which
includes both applicant's and registrant's types of goods and which serves to suggest
that the goods are of a kind that may emanate from a single source.
Third-party registrations which individually cover a number of different
items and which are based on use in commerce may have some probative value to
the extent that they serve to suggest that the listed goods and/or services are of a
type which may emanate from a single source. See In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). See also In re RiseSmart Inc., 104 USPQ2d
1931, 1934-1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-
Serial No. 85289829

4

18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993). Examples of the registrations include:
Reg. No. 2921510 – STALLION for cigarettes, loose
tobacco, cigars (Owner: J. M. Ridgeworth Inc.);
Reg. No. 3136449 – DIPLOMA for cigarettes, cigars,
rolling tobacco, smokeless tobacco, matches, and smoking
accessories not made of precious metals, namely,
ashtrays, cigarette filters, cigarette tubes, rolling papers,
pocket rolling machines, cigarette holders and lighters
(Owner: G & R Brands, LLC);
Reg. No, 3815768 – Mentholicious for cigarette holders;
cigarette papers; cigarette rolling machines; cigarette
tubes; cigarettes; pipe tobacco; pocket device for self-
rolling of cigarettes; pocket machines for rolling
cigarettes; tobacco pipes, tobacco, cigars and cigarettes
(Owner: BBK Tobacco & Foods LLP);
Reg. No. 3791506 – OLD SOUTH for absorbent paper
for tobacco pipes; Asian long tobacco pipe sheaths; Asian
long tobacco pipes (kiseru); chewing tobacco; cigarettes
containing tobacco substitutes not for medical purposes;
hand-held machines for injecting tobacco into cigarette
tubes; hand-rolling tobacco; Japanese shredded tobacco
(kizami tobacco); pipe tobacco; roll your own tobacco;
rolling tobacco; smokeless tobacco; smoking tobacco;
tobacco; tobacco filters; tobacco grinders; tobacco jars;
tobacco jars of precious metal; tobacco pipe cleaners;
tobacco pipes; tobacco pouches; tobacco powder, namely,
snus; tobacco spittoons; tobacco substitute; tobacco
substitutes; tobacco substitutes not for medical purposes;
tobacco tins; tobacco water pipes; tobacco, cigars and
cigarettes (Owner: Global Tobacco LLC); and
Reg. No. 3971896 – PARK AVENUE for cigars, tobacco,
cigarettes, roll your own tobacco; articles for smokers not
of precious metal, namely cigar lighters, cigarette
lighters, cigar cases, cigarette cases, cigar cutters, cigar
holder, cigarette holders, cigar tubes, rolling papers
(Owner: K. Hansotia & Co., Inc.).
Serial No. 85289829

5

The examining attorney also has submitted pages from the numerous
websites, on which cigarettes and/or cigarette rolling products, and cigars are sold.
See for example:
• www.pipesandcigars.com, which sells cigars, tobacco, and “Roll Your Own”
products;
• www.ryotobacco.com, which sells rolling machines, cigarette making
machines, cigars, pipe tobacco, cigarette tubes, cigarette accessories,
cigarette papers, and cigarette filters ;
• www.tobaccostation.com, which sells cigarette making kits, cigars, pipe
tobacco, cigarette machines, smoker’s accessories, cigarette tubes, and
cigarette filters;
• www.thetobaccoshop.com, which sells cigarette rolling machines, pipe
tobacco, cigarette tube injectors, tobacco growing resources, cigars; and
• www.discountsmokeshop.com, which sells rolling machines, tobacco,
cigars, and cigarettes.
February 7, 2012 Office action, pp. 92-183.
In response, applicant has submitted no evidence to support its contention
that the goods are not related. Nor has applicant submitted evidence supporting its
contention that the goods are sold in different channels of trade - cigars through
specialty cigar stores and roll-your-own tobacco products through retail sources,
such as convenience stores.5 We thus find the examining attorney’s evidence
sufficient to show that applicant’s goods and the goods in the cited registration are
related and sold in the same channels of trade. Accordingly, these du Pont factors
favor a finding of likelihood of confusion.
Applicant also contends that consumers of its tobacco and cigarette-rolling
products and cigars are “very knowledgeable about tobacco products and carefully
examine packages and products to determine the character of the goods and to

5 Appeal Brief, p. 10.
Serial No. 85289829

6

ensure that they are buying from a particular source.” Appeal Brief, p. 10.
Applicant submits no evidence to support its contention but instead relies on the
Board’s decision in Stouffer Corp. v. Health Valley Natural Foods, Inc., 1 USPQ2d
1900, 1902 (TTAB 1987) aff’d unpublished 831 F2d 306 (Fed. Cir. 1987).
Applicant’s reliance is misplaced. The issue decided was whether a lower standard
of care than that of ordinary consumers should be applied to purchasers of frozen
diet foods that are inexpensive, subject to quick consumption and frequent
replacement. Id. The Board concluded that a lesser standard of care is not justified
because “diet-conscious purchasers … are a special class of purchasers who may be
expected, at least, to examine the front of the packages in order to determine what
kind of entrée is contained therein and its caloric content” Id. (emphasis added).
Here applicant is asking us to apply a higher standard of care, which on this record,
we cannot do. Accordingly, we treat this du Pont factor as neutral.
Next, we examine “the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.”
du Pont, 177 USPQ at 567. The marks at issue are SEVILLE and DON SEVILLE.
The only difference between the marks is the word “DON,” which prefaces the
word SEVILLE in the cited mark. While “the similarity or dissimilarity of the
marks is determined based on the marks in their entireties … 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
Serial No. 85289829

7

consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The examining attorney contends that SEVILLE should be given more
weight since the word DON is the Spanish equivalent to “Mr.” and is “suggestive,
weak, and diluted due to its widespread us in connection with tobacco and tobacco
products.”6 Examining Attorney’s Brief, pp. 10-11. Applicant countered by
asserting that DON is has no meaning in connection with tobacco products.7 Appeal
Brief, p. 5. We agree with applicant that the word DON has no meaning in
connection with tobacco products. However, because the word “DON,” (the
equivalent of Mister) in the cited mark is merely a title, it has less source-indicating
significance than the term SEVILLE which dominates the cited mark. This
weakness is confirmed by the evidence submitted by both applicant and the
examining attorney. Thus, despite being the first word in the cited mark, DON as
used in the cited registration is subordinate to SEVILLE.8 See In re Chatam
International Inc., 380 F3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (found likelihood
of confusion between JOSE GASPAR GOLD for tequila and GASPAR’S ALE for
beer or ale because marks convey the same commercial impression; discounted the
word ALE in the registered mark and the words JOSE and GOLD in the contested

6 The examining attorney submitted evidence of numerous registrations primarily for cigars
in which the mark commences with the word “DON.”
7 To support this position, applicant submitted in excess of 100 registrations for marks for
various items in which the marks commenced with the word “DON.”
8 The strength of the word SEVILLE in the cited mark is not diminished by the co-existence
of the cited registration or the fourteen other registrations consisting of or containing the
word SEVILLE for unrelated goods.
Serial No. 85289829

8

mark.) The word SEVILLE as applied to cigars, and to tobacco and cigarette rolling
paraphernalia has the same commercial impression. Both convey an aura of the
well-known nation of Spain.
Comparing the marks in their entireties, and giving greater weight to the
distinctive element SEVILLE which dominates the cited mark and is the entirety of
applicant’s mark, we conclude that the marks are similar in appearance, sound,
connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Having considered all the evidence and arguments on the relevant du Pont
factors, whether discussed or not, we find that applicant’s mark is likely to cause
confusion with the mark in the cited registration. To the extent that there is any
doubt on this issue, it is a well-established principle such doubt must be resolved in
favor of the prior registrant because the newcomer has the opportunity of avoiding
confusion and is charged with the obligation to do so. See In re Shell Oil Co., 992
F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re
G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009).
Decision: The refusal to register is affirmed.