Wednesday, March 23, 2016

TTAB Test: Are These Logo Marks for Coffee Confusingly Similar?

Torrefazione Italia LLC petitioned for cancellation of Trinidad Coffee Company's registration for the mark shown to the right, for coffee, claiming likelihood of confusion with the two marks shown below, for coffee products. The goods are legally identical, and presumably they travel through the same channels of trade to the same classes of consumers. The Board found Petitioner's marks to be "strong in the coffee beverage industry and thus accorded a broad scope of protection." So it all percolated down to one issue: are the marks confusingly similar? They both depict griffins. How do you think this came out? Torrefazione Italia LLC v. Trinidad Coffee Company, Inc., Cancellation No. 92058192 (March 10, 2016) [not precedential].

The Board found that consumers are likely to recognize the animals depicted in the marks as griffins, a beast resembling a lion in a "rampant" stance. But consumers will also perceive the "major differences" in the animals:

Petitioner’s griffin has a large mane, wears a crown and has a long tail, a beak and soft wings. It resembles a lion. Respondent’s griffin has no mane or crown, sports a serpent-like tongue and scales on its wings, and has no tail. It does not resemble a lion. Notably, Respondent’s griffin’s legs are not visible; the griffin may be sitting on a pedestal or standing with legs obscured by the pedestal. Petitioner’s griffin is in the classic “rampant” position.

Moreover, comparing the marks in terms of overall appearance, pronunciation, connotation and commercial impressions, the Board concluded that there is no likelihood that consumers will confuse the source of each parties’ goods based on the marks.

As to appearance, the marks "do not look anything alike." Petitioner's marks include additional design features, including "concentric circles, curlicues, and an abstract representation of the Italian flag that underscores the Italian theme of the mark." Moreover, the prominent wording TERRAFAZIONE ITALIA COFFEE encircles the mark.

Respondent's mark is open at the top and features a seated griffin on a pedestal etched with the capital letter “T” surrounded by a laurel wreath. "The conspicuous griffin in the center of Respondent’s mark and the smaller griffin in Petitioner’s marks are so dissimilar in appearance, as are the marks overall, that the fact that both include a griffin design is an insufficient basis upon which to find likely confusion."

As to pronunciation, Respondent's letter "T" sounds nothing like TERRAFAZIONE ITALIA COFFEE [Doh! - ed.]. As to connotation, Petitioner's marks suggest an Italian brand of coffee, whereas Respondent's mark does not.

The CAFC has recognized that a single du Pont factor may be dispositive, "especially when that single factor is the dissimilarity of the mark."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: WYHP?

Text Copyright John L. Welch 2016.


At 7:59 AM, Blogger Brad Salai said...

What happened to, when the goods are identical, less similarity is required? Don't compare the marks side by side, consumers base decisions on recalled marks? Focus on the marks as a whole, not the differences in the details? And on and on.

I would have counseled a client not to use the griffin and would have expected to lose the cancellation.

If this isn't an anomaly, then I should probably hang it up.

At 8:06 AM, Anonymous Anonymous said...

In-House Sales Director (for pro se Defendant), 1. Big Law, 0.

At 12:19 PM, Anonymous Anonymous said...

A very good decision (and that's the anomaly). If this was an ex parte appeal the Applicant would have lost hands down.

At 1:03 PM, Blogger Malachi 3:16 said...

Hi John - first sentence in opening paragraph said this was an opposition when it was a cancellation. May want to re-clarify your first sentence.

Petitioner had plenty of time in the past to oppose Respondent's mark(s) (only one mark in this cancellation, but Respondent has other similar design marks registered) but didn't, so I am not in the least surprised that the Cancellation was dismissed.

Respondent pro per isn't your average Sales Director either and likely had some help (i.e. contract counsel, a super experienced trademark paralegal, in law school or a law school grad or he has done this before at a previous gig).

Read the record and it is plain that this matter went way too far. I am shocked that big law went to task on this (they certainly know better).


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