Tuesday, January 30, 2007

"QUAKER COFFEE" Fights Its Way to TTAB 2(d) Reversal

Quaker Coffee Company battled its way to a reversal of the PTO's Section 2(d) refusal to register the mark QUAKER COFFEE for coffee shop services ["COFFEE" disclaimed]. The Board found the mark not likely to cause confusion with the registered marks QUAKER STEAK & LUBE and QUAKER STEAK & WINGS for restaurant services. In re Quaker Coffee Co., Serial No. 78465668 (January 16, 2007) [not precedential].

The Examining Attorney contended that QUAKER is the dominant word in each mark, that the word QUAKER is an arbitrary term and has not been registered by any others for restaurant services, and that the involved services are very closely related.

Applicant emphasized that Registrant's marks are used in conjunction with an "automotive-themed restaurant as a nostalgic take-off on QUAKER STATE motor oil and gas stations." Applicant also complained that the PTO had ignored its consumer declarations and its marketing expert.

The Board agreed with the PTO that coffee shops and restaurants are related. It found Applicant's consumer declarations -- "form statements, undoubtedly prepared by counsel" -- to be of no probative value. And the opinions of Applicant's marketing expert "on the ultimate question of law in this case has been given no weight."

Having lost these early rounds, Applicant fought back doggedly, repeatedly stressing "the unique way in which the Quaker Steak & Lube chain of restaurants markets itself:" the restaurants have a "motor vehicle" theme, and are designed to look like gas stations, and in fact, some of the restaurants occupy abandoned QUAKER STATE gas stations. Applicant also submitted several registrations for the mark QUAKER STATE for lubricating oils and service stations (the latter now expired).

The Board noted, however, that there are no limitations regarding channels of trade in either the application or the cited registrations. The Examining Attorney made the point that the issue of likelihood of confusion must be decided based upon the services as recited, not on the basis of extrinsic evidence. Therefore, the Board found that this factor favors a finding of likelihood of confusion.

Finally, turning to the marks at issue, the crucial issue became the connotation of the marks in question. The Examining Attorney argued that the word QUAKER dominates the marks and has the same connotation: coffee or steak provided by a Quaker, i.e., a member of the Society of Friends. Applicant contended, however, that the connotations are quite different because "registrant with its choice of QUAKER STEAK in both its marks is quite intentionally creating a play on words with the mark for oil and lube, QUAKER STATE."

The Board agreed with Applicant: "it is unmistakable that to the average consumer, the overall commercial impression of registrant's marks will be of QUAKER STEAK as a play on QUAKER STATE." The Board observed that this is one of those areas of trademark law where contextual, secondary considerations change the results of the registrability decision." For example, "an identical term may take on very different meanings as applied to related goods, overcoming a likelihood of confusion." [E.g., PLAYERS for men's underwear and men's shoes]. Another example is a "newly-coined combination of descriptive components" creating "a readily-understood alternative meaning." [i.e., a double entendre like SUGAR & SPICE for bakery products].

Similarly, "consumers who become acquainted with registrant's services would readily make an association between its QUAKER STEAK marks and QUAKER STATE oils and lubes."

Therefore, notwithstanding the phonetic and visual similarities in the marks and the close relationship of the services, the Board found the differences in connotation sufficient to distinguish the marks and avoid a likelihood of confusion.

TTABlog comment: I like the result in this case, but I'm not convinced that the record contains sufficient evidentiary support for the Board's finding regarding connotation. Shouldn't there be some proof that QUAKER STATE is a well-known motor oil? In Pennsylvania I'm sure it is, but I wonder how well known it is in, say, Oregon, and whether Oregonians would catch the connection between Registrant's marks and QUAKER STATE motor oil. Oregonians might just think that "steak and lube" is some strange dish dreamed up by the Quakers, to eat with their coffee.

Text Copyright John L. Welch 2007.


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