Trendsettah, Inc.

Trademark Trial and Appeal Board

Aug 17, 2017

No. 85623619 (T.T.A.B. Aug. 17, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 17, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trendsettah, Inc.
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Serial No. 85623619
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Kenneth L. Tolar for Trendsettah, Inc.

Salima Parmar Oestreicher, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Wolfson, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Trendsettah, Inc. (“Applicant”) seeks to register the mark SWAG BERRY, in
standard characters (BERRY disclaimed), for “cigars; tobacco; tobacco pouches;
tobacco water pipes.”1 The Examining Attorney refused registration under Section
2(d) of the Act on the ground that Applicant’s mark so resembles the registered mark
shown below

1 Application Serial No. 85623619, filed May 11, 2012 under Section 1(a) of the Trademark
Act.
Serial No. 85623619
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(CIGAR and DR disclaimed) for “premium cigars, excluding machine-made cigars of
the cigarillo type with a ring size not exceeding 30/64 of an inch”2 that use of
Applicant’s mark in connection with Applicant’s goods is likely to cause confusion or
mistake or to deceive prospective purchasers. After the refusal became final,
Applicant appealed and Applicant and the Examining Attorney filed briefs.
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth 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, 1203 (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, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of

2 Registration No. 4574161, issued July 29, 2014. The registration includes this description
of the mark: “The mark consists of the word ‘SWAG’ in stylized form with the top end of the
letter ‘S’ extending horizontally over the letter ‘W’ with a horizontal line over the letter ‘G’
with the bottom end of the letter ‘G’ extending horizontally under the letters ‘SWA’ with two
dots at the left bottom end of the letters ‘S’ and ‘G’ with a crown design tilted to the right over
the letter ‘G’ and superimposed over the right end of the horizontal line that is located over
the letter ‘G’ with the words ‘CIGAR LIFESTYLE’ below ‘SWAG’ in smaller size and the
letters ‘DR’ in stylized form with an underline, and enclosed within a generally oval outline,
the underlined ‘DR’ within the generally oval outline being located at the bottom right end of
the letter ‘G.’”
Serial No. 85623619
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differences in the essential characteristics of the goods and differences in the
marks.”).
Turning first to the goods, they are legally identical, as Applicant’s unlimited
identification of “cigars” encompasses Registrant’s more specific identification of
“premium cigars.” While Registrant specifically excludes machine-made cigarillo
premium cigars under a certain size from its identification, all of the premium cigars
falling within Registrant’s identification of goods are nevertheless encompassed by
and thus legally identical to Applicant’s goods.3
Where, as here, Applicant’s and Registrant’s goods are legally identical, we must
presume that the channels of trade and classes of purchasers for those goods are also
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are identical goods, the channels of trade and classes
of purchasers are considered to be the same).4

3 In its Appeal Brief, Applicant states that it “is willing to exclude premium cigars with a
ring size exceeding 30/64 of an inch, if necessary, in order to avoid consumer confusion.” 4
TTABVUE 8. The statement is too late. Applicant should have ensured that any amendment
it wanted to make was entered during prosecution, or, if necessary, requested a remand
before filing its Appeal Brief so that the Examining Attorney could consider the amendment.
Trademark Rule 2.142(g) (“An application which has been considered and decided on appeal
will not be reopened except for the entry of a disclaimer … or upon order of the Director ….”);
In re Faucher Industries Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (Board cannot “re-open
the application for amendment to the identification by applicant”).
4 The Examining Attorney introduced evidence that not only are premium, machine made,
small, fat, flavored, big ring gauge, discount and cigarillo-type cigars sold together on the
same websites, sometimes under the same trademarks, but these products (which are
Serial No. 85623619
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The legal identity of Applicant’s and Registrant’s goods and their overlapping
channels of trade not only weigh heavily in favor of finding a likelihood of confusion,
but also reduce the degree of similarity between the marks necessary to find a
likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010).
As for the marks, they are more similar than dissimilar “in their entireties as to
appearance, sound, connotation and commercial impression,” because they each
begin with the identical term SWAG. 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). Indeed, the first term in a mark is often
its dominant portion. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”); see also, Palm Bay Imps., Inc., 73
USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In addition to being first, SWAG is the dominant portion of Applicant’s mark
because the second term, BERRY, is descriptive of tobacco products and disclaimed.

encompassed by Applicant’s broad identification) are sometimes also offered together with
premium cigars, including Registrant’s. Office Action of July 26, 2016 (printouts from
“thompasoncigar.com,” “tobaccostock.com,” “cigarsinternational.com” and
“bestcigarprices.com”).
Serial No. 85623619
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In fact, the Examining Attorney introduced evidence that third parties offer berry-
flavored cigars:

Office Action of July 10, 2012. It is settled that descriptive and disclaimed terms are
entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at
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752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed
word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”).
As for Registrant’s mark, SWAG is dominant not only because it is first, but also
because it is significantly larger than the other literal elements of the mark, and
highlighted by the horizontal lines above and below it which protrude from the top of
the “S” and the bottom of the “g.” Moreover, the remaining literal elements of the
mark are quite weak: “cigar” is generic and disclaimed; “DR,” which stands for
Dominican Republic,5 is geographically descriptive and disclaimed; and while there
is no evidence that “lifestyle” is descriptive or commonly used for cigars, the phrase
“cigar lifestyle” merely highlights the nature of Registrant’s goods and perhaps
suggests a benefit or characteristic of them. In short, SWAG immediately draws
consumers’ eyes because of its size and position, and is the source-identifying feature
of the mark given the descriptive and weak nature of the mark’s other literal
elements.6
Moreover, SWAG is the term consumers will use to call for the goods because it is
literal. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding

5 Office Action of July 26, 2016 (printout from “cigarsinternational.com”).
6 The crown design, dots and other design elements do not detract from the dominance of
the term SWAG. To the contrary, the placement of these design elements highlights the
dominance of SWAG.
Serial No. 85623619
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that “if one of the marks comprises both a word and a design, then the word is
normally accorded greater weight because it would be used by purchasers to request
the goods or services” and “because applicant’s mark shares with registrant’s mark
that element responsible for creating its overall commercial impression, the marks
are confusingly similar”); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the
dominant portion”). We have not ignored the mark’s other literal elements -- “cigar,”
“lifestyle” and “DR” – but they are not source identifying for cigars and are therefore
much less significant to the mark’s overall commercial impression than the dominant
term SWAG.
While Applicant’s and Registrant’s marks are distinguishable when considered
side-by-side, that is not the test. Rather, the test is whether the marks are sufficiently
similar in terms of their overall commercial impression that confusion as to the source
of the goods offered under the marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Here, they
are sufficiently similar given that they share the identical first term which is the
dominant feature of both marks and will be used to call for Applicant’s and
Registrant’s cigars. This factor therefore also weighs in favor of finding a likelihood
of confusion.
Finally, Applicant’s argument that consumers of Applicant’s and Registrant’s
cigars are sophisticated is unsupported by any evidence of record. Applicant’s reliance
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on a factual finding of sophistication in General Cigar Co. v. G.D.M. Inc., 988 F.Supp.
647, 45 USPQ2d 1481 (S.D.N.Y. 1997) is misplaced because the finding, which is not
binding on the Board, was based on the record in that case in contrast to the lack of
any record on sophistication in this case. In any event, the court’s finding was in the
context of issuing a preliminary injunction rather than a final decision, and the court
ultimately found confusion likely. Here, even if purchasers of Registrant’s “premium”
cigars are sophisticated and exercise heightened care, Applicant offers “cigars,” which
could include any type of cigar, and we must base our decision on the “least
sophisticated potential purchasers” thereof. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen.
Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),
judgment set aside on other grounds, 110 USPQ 1679 (TTAB 2014)).
Even if we were to assume despite the lack of any supporting evidence that the
relevant consumers are sophisticated, this factor is easily outweighed by the legally
identical goods, overlapping channels of trade and similar marks, which make
confusion likely even among sophisticated purchasers.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.