WMGA, Inc.

Trademark Trial and Appeal Board

May 30, 2000

No. 75306785 (T.T.A.B. May. 30, 2000)

Paper No. 12
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/30/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re WMGA, Inc.
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Serial No. 75/306,785
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Leslye S. Fenton of Odin, Feldman & Pittleman, P.C.
for WMGA, Inc.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Hanak, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
WMGA, Inc. has filed an application to register the
mark SANTA LUCIA for “coffee beans, whole and ground.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of

1 Serial No. 75/306,785, filed June 11, 1997, based on an
allegation of a bona fide intent to use the mark in commerce.
The application as filed recited a number of coffee and tea
products, but the identification of goods was ultimately limited
to the above.
Ser No. 75/306,785
2
confusion with the marks SANTA LUCIA2and SANTA LUCIA and
design,3 as shown below, both of which have been registered
by the same entity for “mineral waters.”
Applicant and the Examining Attorney have filed briefs, but
no oral hearing was requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors4 which are
relevant under the present circumstances. Two key
considerations in our analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods with which the marks are being
used or are intended to be used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
Applicant’s mark SANTA LUCIA and registrant’s mark
SANTA LUCIA (Registration No. 1,888,761) are obviously

2 Registration No. 1,888,761, issued April 11, 1995.
3 Registration No. 1,894,254, issued May 16, 1995. The statement
is made that the lining in the mark is a feature of the mark and
is not intended to indicate color.
Ser No. 75/306,785
3
identical. Moreover, we agree with the Examining Attorney
that even in registrant’s second mark, SANTA LUCIA and
design, SANTA LUCIA is the dominant portion of the mark and
the portion which will be relied upon by consumers in
calling for the goods in the marketplace. As a general
rule, design elements of a mark are of lesser import,
because it is the word portion of a mark, rather than any
design feature, unless highly distinctive, which is more
likely to be remembered and relied upon by customers in
calling for the goods. See Ceccato v. Manifattura Lane
Gaetano Marzotto & Fugli S.p.A., 32 USPQ2d 1192 (TTAB
1994); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987).
Applicant has acknowledged that the respective marks
are similar in sight and sound, but argues that a new
meaning has been attributed to its mark in the marketplace
by the association of the mark with applicant’s particular
product. Applicant claims that the meaning of quality
which its product has brought to the mark SANTA LUCIA is
sufficient to avoid confusion. Applicant states that its
coffee beans come from a single plantation in Nicaragua and
are sold to the finest restaurants, hotels, gourmet

4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/306,785
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supermarkets and coffee shops. Applicant relies heavily
upon the rulings made by the District Court in Southern
Foods Group L.P. v. Ben & Jerry’s Homemade Inc., 48 USPQ2d
1220 (D. Utah 1998) as support for its contention that
identical marks can be used on the same product, much less
the different products involved here, without the
likelihood of confusion.
The Southern Foods case was an infringement and unfair
competition action in which an injunction was sought
barring the defendants’ further use of the mark TOTALLY
NUTS for ice cream. The District Court considered not only
the marks and the goods of the parties, which were the
same, but other factors involved in the actual marketing of
the goods, particularly the trade dress, noting the
distinct visual differences in the packaging used by the
two parties.
By contrast, the present appeal involves the right of
applicant to register its mark, in view of the statutory
bar under Section 2(d) when there is the likelihood of
confusion with a previously registered mark. The
registration sought is for the word mark SANTA LUCIA in a
typed drawing, which leaves applicant free to use the mark
in any format. Since the trade dress used in conjunction
with the mark may be changed at whim, the trade dress at
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5
any given time is normally not considered in determining
likelihood of confusion. An exception may be made if the
trade dress provides evidence that there is a likelihood of
confusion, i.e., that the commercial impression created by
the mark as it is being used is confusingly similar to the
other mark. See Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984). The alternative, however, is not true. The absence
of a likelihood of confusion cannot be established on the
basis of the present trade dress of the respective
products, in view of its transitory nature.
In any event, applicant is arguing that confusion is
avoided here by the mere fact that the products involved
are different products which must be packaged differently,
not by any distinctive style of trade dress. The
similarity or dissimilarity of the goods and their
packages, however, are factors separate from the similarity
of the marks per se. Applicant’s mark and registrant’s
mark SANTA LUCIA are identical and thus necessarily create
the identical commercial impression. Even though
registrant’s second mark has an additional design feature,
we find the overall commercial impression of this mark
highly similar to applicant’s mark. The fact that
applicant’s coffee beans bearing the mark SANTA LUCIA have
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achieved a high degree of recognition in the marketplace as
a quality product is immaterial, if the previously
registered marks are confusingly similar to applicant’s
mark.
Turning to the goods, we note that the Examining
Attorney has made of record copies of several third-party
registrations showing the adoption by the same entity of
the same mark for both mineral waters and coffee. She
relies upon this evidence to support her argument that the
goods are related products which may be found in the same
commercial setting and, if being marketed under the same
mark, may well be assumed by purchasers to originate from
the same source. She also points out that coffee beans are
used to make coffee; that both coffee and mineral waters
are beverages and may be used interchangeably; and that
these are common items which are purchased without any
particular expertise.
Applicant argues that there is an obvious difference
in the goods, namely, applicant’s coffee beans are staples
and registrant’s mineral waters a “light fluid,” and that
as such, the products would be not normally be sold in the
same areas in food stores. Applicant contends that the
goods are not only marketed in visually distinct packaging,
but there is also a price differential, registrant’s
Ser No. 75/306,785
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mineral waters being significantly less expensive.
Applicant also points to the affidavit of its president
William Gutierrez as support for its arguments that its
coffee beans travel in different channels of trade and are
sold to a different class of purchasers. In this affidavit
Mr. Gutierrez states that applicant sells its “premium”
coffee beans, which come from one specific plantation in
Nicaragua, to a specialized market, the food and
hospitality industry, and that the purchasers of this
coffee are extremely discriminating.
AS a general principle, the issue of likelihood of
confusion must be determined on the basis of the goods as
identified in the application and in the cited
registration(s). Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Thus, despite applicant’s arguments as to the
quality or price of its coffee beans, the goods as
identified in the application cover all grades of coffee
beans, regardless of origin or cost. Furthermore, if there
are no restrictions in the application or registration(s)
as to channels of trade, the parties’ goods must be assumed
to travel in all the normal channels of trade for goods of
this nature. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). There being no
Ser No. 75/306,785
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restrictions in applicant’s application as to the
particular market in which applicant claims to sell its
coffee beans, we must assume that the goods travel in all
the normal channels for coffee beans, which includes
general retail outlets.
Accordingly, we make our determination of the
similarity or dissimilarity of the goods by a comparison
simply of coffee beans, whole and ground, and mineral
waters. As a general principle, it is not necessary that
the goods be similar or even competitive to support a
holding of likelihood of confusion, it is sufficient if the
respective goods are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give raise to the mistaken belief that
they emanate, or are associated with, the same source. See
In re Albert Trostel & Sons, 29 USPQ2d 1783 (TTAB 1993) and
the cases cited therein. When the goods are food products,
the use of identical marks which are not descriptive or
highly suggestive in itself weighs heavily on the side of
likelihood of confusion. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
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1984); In re Vroman Foods, Inc., 224 USPQ 242 (TTAB 1984)
and the cases cited therein.
Here, besides bearing identical (or nearly identical)
non-suggestive marks, the goods are closely related
beverage products. While applicant’s coffee beans may be
the raw ingredient for a coffee drink, both products would
be purchased for consumption as beverages. See In re Pan-
0-Gold Baking Co., 20 USPQ2d 1761 (TTAB 1991)[muffin mix
and baked bread and rolls closely related bread products].
The two products might very well be encountered by the same
purchasers in the same retail outlets, regardless of the
specific location of each product in a particular store,
and be purchased at the same time for use either together,
at a party or family gathering, or for use singularly,
depending upon the beverage desired at a particular time.
Although the third-party registrations made of record by
the Examining Attorney are not evidence that the marks
shown therein are actually in use, they are adequate to
suggest that both coffee products and mineral waters may
reasonably be expected to emanate from a single source,
along with other beverage products. See In re Albert
Trostel & Sons Co., supra. This being the case, we find
confusion highly likely if the identical marks SANTA LUCIA,
or the highly similar marks SANTA LUCIA and SANTA LUCIA and
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design, are used on applicant’s coffee beans and
registrant’s mineral waters.
Decision: The refusal under Section 2(d) is affirmed.
E. W. Hanak
H. R. Wendel
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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