Tuesday, August 16, 2016

TTAB Test: Are These Ice Cube Marks Confusable for Soft Drinks?

The USPTO refused registration of the mark shown below left, for "flavored bottle water, flavored enhanced water, flavored water, purified bottled drinking water, bottled artesian water, drinking water with vitamins, distilled drinking water," finding the mark likely to cause confusion with the registered mark shown below right, for "soft drinks." Both marks depict an ice cube and fruit. Based on dictionary definitions of "soft drink," the Board concluded that the goods are in part identical. But what about the marks? How do you think this came out? In re Juice of New York, Serial No. 85908633 (August 12, 2016) [not precedential].

The dictionary evidence defined "soft drink" as "a beverage that is not alcoholic or intoxicating and is usually carbonated, as root beer or ginger ale." According to the Board, flavored waters are encompassed within "soft drinks." [Are applicant's waters carbonated? - ed.].

As to the marks, the Board found them to be similar in appearance "in a number of ways." Both marks represent an ice cube juxtaposed with a form of fruit. Moreover, "the numerous circular grapes in Applicant's mark resemble the many round lobes of the berry in Registrant's mark." The registered mark has no color claim, and so it might be used in colors that resemble those of applicant's mark. Of course, the presence of the wording JUICE INC. is a point of difference.

Registrant's mark has no sound, whereas the sound of JUICE INC. is a point of difference.

As to meaning, the unusual idea of a combination of fruit with an ice cube in both marks constitutes a "substantial degree of similarity in meaning."

The concept of juice is expressed literally in Applicant’s mark, and not in the cited mark. However, we view this as a very weak point of distinction in meaning between the two marks, inasmuch as both marks are for use in connection with goods that may be flavored with juice; and because the idea of juice from fruit is at least suggested by the representation of fruit in Registrant’s mark.

The Board found that, although there are a number of differences in the marks, they are outweighed by the "surprising similarity inherent in the unusual juxtaposition of an item of fruit with a cube of ice." The Board concluded that "overall, Applicant's mark creates the commercial impression of being a rough or rudimentary depiction or imitation of Registrant's more realistically rendered mark."

Applicant pointed out that it owns the copyright in its mark, but the Board pointed out that ownership of a graphic design is legally separate from the right to register that design as a trademark.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I would have reversed.

Text Copyright John L. Welch 2016.


At 8:07 AM, Blogger Gene Bolmarcich said...

So trademarks now protect basic "ideas". Should have been precedential in my opinion. That's quite a leap for trademark law to take! I expect to see this on the front page of the Wall Street Journal.

At 8:37 AM, Anonymous Anonymous said...

Really poorly analyzed here. Just from the visual appearance alone the marks create distinct commercial impressions. I'd expect this to be reversed if they appeal to the Federal Circuit.

At 12:56 PM, Blogger Annette Heller said...

I agree that it should have been reversed. I also agree with Bolmarcich in that this opinion seems to protect an idea,

At 9:04 PM, Blogger Carole Barrett said...


At 2:27 PM, Anonymous Anonymous said...

Don't hold your breath on the CAFC getting this right either


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