Friday, September 09, 2011

Test Your TTAB Judge-Ability on this "KICK ASS" 2(d) Coffee Opposition

Here's the situation: Applicant Coffee Brake sought to register the mark KICK AX COFFEE GET BIG WOOD WITH OLD GROWTH BLEND COFFEE & Design, in the form shown below, for coffee [COFFEE, BLEND. and the designs of coffee beans disclaimed]. Opposer Kicking Horse claimed likelihood of confusion with its mark KICK ASS, in standard character form, for coffee. Who got the axe? Who kicked ass? You be the judge. Kicking Horse Coffee, Ltd. v. The Original Coffee Brake, Opposition No. 91193625 (August 23, 2011) [not precedential].

After the opposition was filed, Opposer Kicking Horse amended its registration under Section 7(e) from KICK ASS COFFEE to KICK ASS. The parties opted for the Board's ACR procedure, submitting their testimony via affidavit.

Since the involved goods are identical, the Board presumed that they travel through the same trade channels to the same classes of consumers. Opposer claimed that its mark has achieved widespread recognition, but its evidence fell short. It argued that the renown of its mark in Canada "can spill over" into this country, but it failed to show any renown in the USA.

On the other hand, Applicant Coffee Brake failed to show that the KICK ASS mark is weak: it pointed to the marks BAD ASS, GOLDEN KICK, HALF ASS, TRUE KICK, and WILD ASS for coffee, but the Board found those marks [too stupid? no] too different from KICK ASS to have probative value. Moreover, third-party registrations are not evidence of use or recognition of the marks. Likewise, Applicant's evidence of four third-party uses of KICK ASS in connection with coffee was unaccompanied by evidence of the extent of use.

As to the similarity of the marks, the Board noted once again that when the goods are identical a lesser degree of similarity is necessary to support a likelihood of confusion finding.

The Board concluded that consumers would refer to Applicant's coffee as KICK AX COFFEE because they will shorten the longer phrase. In fact, Applicant refers to its coffee as KICK AX COFFEE in its marketing materials. Of course, KICK AX COFFEE and KICK ASS are similar in appearance and sound.

As to meaning, KICK ASS connotes "powerful aggressive flavor." KICK AX COFFEE, however, does not have a readily understood meaning; it is used as a "play on the logging culture." Since it does not have any meaning, consumers will associate KICK AX with the more familiar term "Kick ass."

The Board concluded that the similarities in the marks, which are not likely to be seen side-by-side, outweigh their differences.

Finally, Applicant pointed to the lack of actual confusion between the marks, but the evidence did not show that there has been a reasonable opportunity for actual confusion to have occurred. Although both parties sell their goods in Oregon, Applicant's goods are sold at its coffee shop and at local farmer's marks, while Opposer's goods are sold at supermarkets and drug stores. The Board concluded that any overlapping sales and advertising is de minimis.

Balancing the relevant duPont factors, the Board found confusion likely and it therefore sustained the opposition.

TTABlog Queries: KICK ASS coffee couldn't possibly come in a decaf version, could it? Suppose someone came out with KISS ASS coffee (maybe decaf). Would that be confusingly similar to KICK ASS? How about KISS ASS for tea?

Text Copyright John L. Welch 2011.


At 1:59 PM, Anonymous Anonymous said...

So much for the requirement to consider the mark as a whole....


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