Monday, October 30, 2006

TTAB Finds "GOYA" and "GAYO MOUNTAIN COFFEE" Confusingly Similar for Coffee

In this Section 2(d) cancellation proceeding, Respondent Holland Coffee had a mountain to climb: the goods are legally identical and Petitioner Goya's mark was deemed "strong and distinctive." It boiled down to a question of the similarity of the marks, and Holland lost. The Board cancelled its registration for the mark GAYO MOUNTAIN COFFEE for "coffee beans" ["COFFEE" disclaimed], finding it likely to cause confusion with the previously-used and registered mark GOYA for various food products, including coffee. Goya Foods, Inc. v. Holland Coffee, Inc., Cancellation No. 92030908 (September 12, 2006) [not citable].

The Board began by noting that coffee beans and coffee are relatively inexpensive items that are purchased by consumers exercising at most ordinary care. It observed that, when the marks at issue are applied to legally identical goods, the degree of similarity between the marks that is necessary to support a likelihood-of-confusion finding diminishes.

As to the marks, because COFFEE is a generic term for Respondent's goods, and MOUNTAIN describes or suggest that the coffee is grown in mountainous regions, the word GAYO is the dominant element of Respondent's mark. The Board therefore found, bearing in mind the "fallibility of human memory," that the marks are "similar," After all, the average purchaser, according to Board precedent, "normally retains a general rather than a specific impression of trademarks."

Moreover, Petitioner Goya Foods established that it has sold food and beverage products under the GOYA mark for more than 65 years, with significant annual sales and advertising expenditures. [It claimed to be "the number-one rated Hispanic company in the United States." ] The record was "devoid of any third-party uses or registrations of GOYA or similar marks." [Note, however, that Registrant Holland did not submit testimony or offer any evidence]. And so the Board found GOYA to be "strong and distinctive."

The Board therefore concluded that confusion is likely, and it sustained the petition for cancellation.

Petitioner Goya also asserted that the GAYO MOUNTAIN COFFEE mark is primarily geographically descriptive, and that the mark (registered under Section 2(f)) lacks acquired distinctiveness. However, Petitioner's only evidence on these points consisted of excerpts from printed publications. Because Petitioner relied on the excerpts to prove the truth of the matter asserted therein [that GAYO MOUNTAIN is a geographic location where coffee beans are grown], that evidence constituted inadmissible hearsay.

The Board noted that, since the challenged registration issued under Section 2(f), Goya was not required to "advance evidence of geographical descriptivess." However, Goya had the burden of establishing a prima facie case that the 2(f) requirement had not been met, and this Goya failed to do.

TTABlog comment: I think the differences between the marks make this a closer case than the TTAB let on. But between a senior registrant who puts in a full case and a junior registrant who does very little, the Board is far more likely to rule for the former.

Text Copyright John L. Welch 2006.


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