Up in Smoke, Inc.v.What a Life, LLC dba Up In Smoke

Trademark Trial and Appeal Board

Jul 27, 2015

No. 91213604 (T.T.A.B. Jul. 27, 2015)

Mailed: July 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Up in Smoke, Inc.
v.
What a Life, LLC dba Up In Smoke
_____

Opposition No. 91213604
to Application Serial No. 85696428
_____

Stephen L. Levine of Anderson & Levine LLP for Up In Smoke, Inc.

Steven M. McHugh of Law Offices of Steven McHugh LLC, for What a Life,
LLC dba Up In Smoke.
_____

Before Mermelstein, Ritchie, and Kuczma, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On August 6, 2012, What a Life, LLC, dba Up In Smoke (“Applicant”)
applied to register Up In Smoke, in standard character form, for “cigars,” in
International Class 34, and “retail store services featuring cigars, tobacco
products, tobacco accessories,” in International Class 35.1 On November 20,
2013, Up In Smoke, Inc. (“Opposer”), filed an opposition to the registration of

1 Application Serial No. 85696428, filed under Section 1(a) of the Trademark Act.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91213604
2
Applicant’s mark on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s mark and trade name. Opposer asserted in its
Notice of Opposition that it has operated under the trade name “Up In
Smoke” since 1983, and that such operation has included trademark use of
“Up In Smoke” as a mark “in connection with a) the sale of ‘cigars’; and b)
retail store services featuring cigars, tobacco products, and tobacco
accessories.” Notice at para. 2; 1 TTABVUE 4.2 In its answer, Applicant
admitted as follows: “Applicant admits there is a similarity between the
Applicant’s goods and services and the Opposer’s goods and services.” Answer
at para. 12; 5 TTABVUE 3. Applicant otherwise denied the salient
allegations of the notice and asserted no affirmative defenses.
Both parties filed briefs, and Opposer filed a reply brief.
The Record
The record consists of the pleadings; the file of the involved application
and two testimonial depositions submitted by Opposer, that of John C.
Barton, Sr., and Dan Schmitt, both taken on October 29, 2014, and including
the Exhibits thereto.

2 Opposer also stated in the Notice: “Opposer is the owner of U.S. Trademark
application Serial Number 86/124,535 of the word mark ‘Up in Smoke’ in connection
with a. the sale of ‘cigars’; and b. retail store services featuring cigars, tobacco
products, and tobacco accessories.” 1 TTABVUE 5. The application was not made of
record or otherwise mentioned in the testimony, and while Opposer’s brief asserts
that it has been “suspended,” there is no mention in the pleadings or record of
whether it was refused based on Applicant’s application.
Opposition No. 91213604
3
Standing and Priority
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Dan Schmitt testified that he is “one of two owners and the president” of
Opposer, Up In Smoke, Inc. 12 TTABVUE 4. He testified that he acquired the
company from its previous owners, expanded it from five to seven stores, and
“launched a social media campaign on Twitter and Facebook”. Id. at 5.
Q: All right. And when did you acquire the company?
A: October 8th, 2012.
Id. at 4.
Applicant argues that Opposer has “no proof as to whether the sale
included anything other than the physical assets of the business.” 14
TTABVUE 5. However, we note that Mr. Barton testified as to his personal
knowledge of the use of the mark Up In Smoke by Opposer’s predecessor from
1983 continuously until the sale in 2012. 11 TTABVUE 18. Mr. Barton
testified that this included use on “cigar bags, pipe tobacco bags, matches”
Opposition No. 91213604
4
and retail services featuring “pipe tobacco, cigars, obviously pipes, a variety
of accessories.” Id. at 6. Mr. Schmitt’s testimony clearly indicates that he
continued this use.
Q: And since purchasing the company have you continued to
use the Up in Smoke mark?
A: Yes. In fact, we’ve kind of expanded the use of it.
12 TTABVUE 5. This testimony also regarded the goods sold under the
mark.
Q: And you’ve continued to sell the same accessories that were
sold since ’82 or ’83?
A: Yes.
Id. at 5-6.
Q: All right. And those are – let’s go through those.
A: We sell lighters, cutters, pipes, pipe tools, pouches for pipe
tobacco.
Q: Ashtrays?
A: Ashtrays, humidors.
Q: Pipe tools?
Q: Yes, pipe tools.
Q: And pipe cleaners?
A: Pipe cleaners.
Q: Tobacco?
Opposition No. 91213604
5
A: Tobacco.
Q: That’s not an accessory, is it? But those things you’ve been
selling continually and were sold earlier.
A: Yes. We also have – we lease lockers to customers as well.
Id. at 6.
Mr. Schmitt also testified regarding sales to out-of-state consumers. He
testified that he advertises on Internet and social media platforms to
customers around the country. Id. at 7-9. He testified that his business and
the Up In Smoke mark have been mentioned on a Dallas sports radio show
with out-of-state broadcast coverage. Id. at 9. He testified as to a well
established customer from Georgia to whom he recently mailed a few boxes of
cigars. Id. at 7-8, and Ex. 8. Finally, he mentioned a recent large marketing
event designed to attract even customers from out of state, wherein a Harley
Davidson motorcycle was raffled. Id. at 8-9. Regarding the practice of
reaching out to out-of-state customers, he said, as a further indication of his
purchase and continuation of the goodwill of the name and mark Up In
Smoke, “That’s a practice that was established before I purchased Up
In Smoke.” Id. at 7.
As Applicant points out, there is no testimony or evidence regarding the
specific terms of the sale by which Opposer purchased the Up In Smoke
company. However, we note that the testimony is clear and uncontradicted
that Opposer has continued to use the mark as it was used previously. Our
Opposition No. 91213604
6
case law indicates that the sale of tangible assets may be seen as symbolic of
the transfer of good will. Safeway Stores, Inc. v. Sure Oil & Chemical Corp.,
174 USPQ 477, 479 (TTAB 1972) (finding sale of all “assets” of a business to
include goodwill); see J. Thomas McCarthy, 3 McCarthy On Trademarks and
Unfair Competition § 18:23. Without any contradictory evidence in the
record, and with testimony and exhibits supporting Opposer’s use of the
mark, we find that Opposer did in fact purchase the goodwill that it purports
to have purchased from its predecessor. See 12 TTABVUE and Exs. 8, 9.
Accordingly, Opposer is a successor to its predecessor’s continuing trademark
rights, including the right of priority established before Opposer’s purchase of
the business.
We find that Opposer has established its standing, in showing a
reasonable belief of damage, as a competitor of Applicant’s. We further find
that Opposer has established its priority since 1982 as to “cigars and pipe
tobacco” and as to “retail store services featuring cigars, tobacco products,
and tobacco accessories.”
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
Opposition No. 91213604
7
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks.”). We
discuss the du Pont factors for which there is relevant argument and
evidence. The others we consider to be neutral.
Goods and Services and Channels of Trade
Applicant seeks to register its mark for use on “cigars” and in connection
with “retail store services featuring cigars, tobacco products, tobacco
accessories.” We have found that Opposer has established priority for these
same goods and services.3 Accordingly, the goods and services are legally
identical.
As for channels of trade, Applicant argues that Opposer’s only channel of
trade “is Texas intrastate commerce.” 14 TTABVUE 15. Applicant also states,

3 Applicant also made the following statement in its brief: “Opposer, Up In Smoke, is
a sophisticated business entity with multiple stores across Texas and sells
substantially the same products as Applicant.” 14 TTABVUE 5.
Opposition No. 91213604
8
however, that it has “shipped its goods to Texas.”4 Id. Opposer’s owner,
meanwhile, has testified to having consumers from out-of-state, 12
TTABVUE 7, 8, 9, and Ex. 8. He also testified to advertising via the Internet
and extensively using social media including Twitter and Facebook. Id. at 5,
8. Since Applicant’s identification of goods contains no limitations on its
channels of trade, we find that the channels of trade for these identical goods
and services are likely to overlap and that these second and third du Pont
factors weigh heavily in favor of finding a likelihood of confusion.
The Marks
In comparing the marks, we are mindful that the test is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but
rather 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 respective marks is likely to result. San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average consumer, who retains a
general rather than specific impression of the marks. Winnebago Industries,

4 The geographic scope of Applicant’s business activities is of little relevance because
Applicant seeks a geographically-unrestricted registration, which must be
considered national in scope. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F2d
1565, 218 USPQ 390, 393 (Fed. Cir. 1983). Thus even without Applicant’s actual
business activities in Texas, we must consider that applicant’s goods and services
are offered and performed in the same geographic area.
Opposition No. 91213604
9
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We note that
where the goods and services are identical, the degree of similarity between
the marks which is required to support a finding of likelihood of confusion is
less than if the goods were not identical. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012), citing Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant seeks to register the term “Up In Smoke” in standard
characters. Opposer’s witness, John C. Barton, Sr., testified to Opposer’s use
of the mark Up In Smoke as a design mark, with a pipe, from 1983 through
1995, as shown on the image of the business card below:

11 TTABVUE 14 and Ex. 4. He further testified that the logo used since 1995
is the stylized mark shown below:

Opposition No. 91213604
10
Id. at 14 and Ex. 5.
It is clear that the term “Up In Smoke” is the dominant term in Opposer’s
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“[T]here 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.”). It is this term which consumers will use to call for or refer to
Opposer’s goods and services. See In re Viterra Inc., 671 F3d 1358, 101
USPQ2d 1905, 1911 (Fed. Cir. 2012), citing CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983). In this regard, the marks are in
substantial and dominant part, and in sound and commercial impression,
identical.
We find that when considered in their entireties, this first du Pont factor
also weighs in favor of finding a likelihood of confusion.
Conditions of Sale
Applicant urges us to consider the level of purchasing care likely to be
exercised by consumers of cigars and retail tobacco services. We note that
Applicant’s goods and services are not limited in the identification to any
particular consumers or price levels. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“[t]he authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods
Opposition No. 91213604
11
set forth in the application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular channels of trade or
the class of purchasers to which the sales of goods are directed.” (citations
omitted)). Although Mr. Schmitt testified as to some repeat customers, there
is no evidence that Opposer’s goods and services are targeted to sophisticated
consumers. The cigars referenced in Exhibit 8, were sold at $12.10 per box,
which although perhaps not at the level of an impulse purchase, is not at a
level where consumers might be expected to exercise an extraordinary degree
of care.
Moreover, it is well-established that even sophisticated consumers are not
immune from source confusion. Cunningham v. Laser Golf Corp., 55 USPQ2d
at 1846. With legally identical goods and services being marketing under
substantially identical marks, even a careful, sophisticated consumer of these
goods is not likely to note the differences in the marks. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014).
Accordingly, we find this fourth du Pont factor to weigh in favor of finding
a likelihood of confusion.
Actual Confusion and Potential for Confusion
Applicant discussed the lack of actual confusion, arguing, “In this case,
Opposer and Applicant have been conducting business on a coexistent and
concurrent basis for at least 18 years.” 14 TTABVUE 16. We note, however,
Opposition No. 91213604
12
that while the presence of confusion may be very useful to our analysis, the
lack of evidence of actual confusion carries little weight. J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). This is
especially true where, as here, the record is unclear as to the amount of
meaningful opportunities for confusion to have occurred among purchasers.
Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007).
Accordingly, we find this du Pont factor to be neutral.
Conclusion
Taking into account all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we conclude that the goods and
services are legally identical, and may travel through the same or similar
channels of trade to the general public including unsophisticated customers,
and that the parties marks are, in substantial and dominant part, identical,
and when considered in their entireties, are substantially identical.
In conclusion, we find that there is a likelihood of confusion between the
marks.
DECISION: The opposition is sustained.