Friday, December 02, 2011

Precedential No. 32: CLASSIC AMERICAN BLEND Confusingly Similar to CLASSIC CANADIAN for Tobacco, Says TTAB

In this consolidated proceeding that began more than eight years ago, the Board sustained oppositions to registration of the marks CLASSIC AMERICAN BLEND, in standard character and design form [AMERICAN BLEND disclaimed], for tobacco and tobacco products, on the ground of likelihood of confusion with the registered mark CLASSIC CANADIAN for tobacco [CANADIAN disclaimed]. However, the Board dismissed Plaintiff's Section 2(d) petition for cancellation of a registration for the mark ZIG ZAG CLASSIC AMERICAN BLEND for "smoking tobacco" because the marks are too dissimilar. Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163 (TTAB 2011) [precedential].

Evidentiary Ruling: The Board first addressed an evidentiary issue concerning the admissibility of third-party product packaging that Defendant North Atlantic proffered in order to show “that these products exist and they contain a reference to ‘Classic’ and/or a country designation to designate the place where the tobacco comes from.” Top objected on the ground that the packaging was not properly authenticated. North Atlantic maintained that the documents were properly authenticated by its witnesses, and in any event are self-authenticating under Rule 902(7) of the Federal Rules of Evidence.

The Board agreed with Tops that North Atlantic’s witness did not properly authenticate the documents because there was no testimony as to how and where the packaging was obtained. But the Board sided with North Atlantic on the Rule 902(7) issue.

Rule 902(7) provides that extrinsic testimony is not required for “[i]nscriptions, signs, tags, or labels purporting to have been affixed in the course of business and indicating ownership, control or origin.” In other words, such documents are self-authenticating. The Board ruled that the documents are admissible under the Rule, but it further observed that the documents are “essentially limited to what they show on their face.”

They may be used in the same manner as third-party registrations based on use in commerce, namely to demonstrate any suggestive meaning of the term “Classic” as it is found on packaging for tobacco-related goods. The witnesses’ testimony, to the extent that they have personal knowledge of the goods identified by the exhibits may also be of relevance.

However, the exhibits "are not evidence that the labels or packaging shown or comprising the exhibits have been used in commerce."

The Goods, Trade Channels, and Classes of Purchasers: The Board noted that the parties are competitors in the "roll your own" (RYO) or "make your own" (MYO) tobacco industry. It found the goods of the parties to be either legally identical, since Top's "tobacco" encompassed North Atlantic's identified goods, or to be complementary. The trade channels for the tobacco products presumably overlap, and in fact the evidence showed that the trade channels and classes of purchasers are the same.

Sophistication of Purchasers: North Atlantic contended that, at both the wholesale and retail level, the purchasers of its goods are sophisticated, but the Board was not persuaded. Although wholesale buyers may be more sophisticated in their purchasing decisions, they are not necessarily knowledgeable about trademark issues or immune from source confusion. As to ordinary consumers, the parties' identification of goods encompass less expensive tobacco that would not necessarily be purchased with heightened care. In short, although this factor may favor North Atlantic, it does not outweigh the other du Pont factors.

Strength of Top's Mark: North Atlantic argued that extensive use by third parties of the term CLASSIC for tobacco products, and registration of marks containing that term, show that consumers and the PTO readily distinguish among those marks when viewed in their entirety. North Atlantic also contended that CLASSIC CANADIAN is an inherently weak mark because CLASSIC is highly suggestive and CANADIAN merely describes a tobacco style or blend.

The Board, however, found North Atlantic's evidence unimpressive: the third-party registrations are not evidence of actual use, and the third-party use evidence lacked details as to length of use, degree of exposure, or popularity of the marks.

Top claimed that CLASSIC CANADIAN is a distinctive and strong mark, given its use since 1992 and Top's policing efforts. North Atlantic urged that the mark is inherently weak. The Board found that the record "overwhelmingly establishes that CLASSIC CANADIAN has little intrinsic distinctiveness." Top disclaimed CANADIAN, and CLASSIC suggests that the goods have "lasting significance or worth," or are "of a well-known type." In fact, Top acknowledged the suggestiveness of CLASSIC in the PTO prosecution of its pleaded registration. Although Top's prior statement is not conclusive, it is relevant and adds "shade and tone in the total picture confronting the decision maker."

Third-party registrations demonstrated that CLASSIC has a suggestive meaning for tobacco products. Moreover, the suggestiveness of the word is accentuated by the term CANADIAN. "In other word, Top's mark will be understood as suggesting a 'Canadian' blend of tobacco that is 'of a well-known type' or is 'typical' of such blend."

As to the commercial strength of the CLASSIC CANADIAN mark, there was insufficient evidence of consumer exposure to establish that it is a strong mark. The Board concluded that CLASSIC CANADIAN is an inherently weak mark, and the evidence of commercial strength "does not overcome the mark's intrinsic shortcoming."

Nonetheless, even weak marks are entitled to protection against confusingly similar marks for closely related goods. Here, because the goods overlap in part, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Comparing the Marks: As to North Atlantic's CLASSIC AMERICAN BLEND marks, the Board noted the similarities in appearance and sound, and found that the marks are "equally highly suggestive of a style of tobacco." It concluded that North America's three marks are similar to Top's mark

As to ZIG ZAG CLASSIC AMERICAN BLEND, however, the word CLASSIC "will not likely be perceived by purchasers as distinguishing source." Instead consumers will focus on the ZIG ZAG element, and therefore the Board found that the dissimilarities between this mark and CLASSIC CANADIAN outweigh the similarities. Indeed, the Board concluded that this factor was dispositive as to this mark.

Lack of Actual Confusion: North Atlantic next pointed to the lack of actual confusion despite ten years of coexistence in the marketplace. The Board found that this factor pointed slightly in favor of Defendant.

Reverse Confusion?: Finally, Tops argued that reverse confusion is likely because North Atlantic is now the larger seller. The Board, however, found no reason to alter its likely confusion analysis, since Tops did not show that North Atlantic is a significantly larger newcomer that has saturated the market.

Balancing the du Pont Factors: Resolving any doubt in favor of the registrant, the Board found confusion likely as to the AMERICAN CLASSIC BLEND marks, but not as to the ZIG ZAG version.

Alleged Failure to Use Registered ZIG ZAG Mark: Top claimed that North Atlantic had not used this mark prior to registration, urging that the packaging did not show the mark "as a single, contiguous mark with a unitary commercial impression," since ZIG ZAG and CLASSIC AMERICAN BLEND were in different fonts and separated by the word "Cigarette Tobacco." The Board disagreed. On the front of the canister (above), ZIG ZAG and CLASSIC AMERICAN BLEND are in relative proximity to each other, and the wording "cigarette tobacco" is generic for the goods and does not interject a separate commercial impression between those two elements. In any case, the side of the canister (below) shows the two elements without intervening wording. And so the Board dismissed this claim.

TTABlog comment: I think the Board got this one wrong. I don't think the marks are confusingly similar, given the weakness of Opposer's mark. I also don't think North Atlantic was properly using the ZIG ZAG mark. How about you?

Text Copyright John L. Welch 2011.


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