Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)

The Board affirmed a Section 2(d) refusal of MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design for "Milk beverages containing espresso coffee and milk; milk products containing espresso coffee and milk, excluding ice cream, ice milk and frozen yogurt," in International Class 29, and "Espresso coffee containing milk; and sandwiches flavored with espresso coffee and milk," in International Class 30 [ESPRESSO & MILK disclaimed], finding the mark likely to cause confusion with the mark MOUNT RAINIER COFFEE COMPANY, registered on the Supplemental Register for “coffee” [COFFEE COMPANY disclaimed]. However, the Board reversed a Section 2(e)(3) refusal to register, finding the applied-for mark not primarily geographically deceptively misdescriptive of applicant’s goods. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016) [precedential].

Likelihood of Confusion: The record evidence was clear that the involved goods are identical or closely related, since "espresso coffee," an essential component of applicant's goods, is a kind of "coffee."

The Marks: The Board agreed with Examining Attorney April A. Hesik that the involved marks are significantly similar. The dominant portion of the marks is virtually identical: MT. RAINIER and MOUNT RAINIER. The words COFFEE COMPANY in registrant's mark and ESPRESSO & MILK in applicant's mark are generic, or at least very highly descriptive, and therefore of little or no trademark significance. The Board recognized that applicant's mark also contains the image of a mountain and the words THE MOUNTAIN OF SEATTLE, but they reinforce, rather than detract from, the impression made by the words MT. RAINIER. Moreover, the phrase THE MOUNTAIN OF SEATTLE is far less prominent than MT. RAINIER. The fact that applicant's mark includes color and a circular carrier is not significant, since registrant's standard character mark is not limited to any particular color or font, and the circular background is an ordinary shape that would not change the commercial impression conveyed by applicant's mark.

The Board concluded that the marks, viewed in their entireties, are substantially similar in appearance, sound, meaning, and commercial impression.

Strength of the Cited Registration: Applicant argued that the cited mark is inherently weak and therefore entitled to a narrow scope of protection, since it is registered on the Supplemental Register. The Board pointed out that it is settled law that a mark on the Supplemental Register may be cited as a bar to registration under Section 2(d). [See cases cited]. "[L]ikelihood of confusion can be found even it a term is merely descriptive and does not identify source: Registration on the Supplemental Register is sufficient, and a showing of trade identity rights in the form of secondary meaning is unnecessary."

Applicant further asserted that the scope of protection to be accorded a descriptive mark is limited to substantially identical marks for substantially identical goods, but the Board disavowed that theory in In re Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1991), holding that while a mark on the Supplemental Register may be weaker and of less ability to preclude registration of a similar mark, there is no categorical rule like that posited by applicant and there is no different test for likelihood of confusion to be applied in such a case.

Although the record suggested that the registered mark was deemed primarily geographically descriptive, since registrant is located near Mt. Rainier, such a mark is eligible for the Principal Register upon a showing of acquired distinctiveness, and there was nothing to suggest that the cited mark is generic or highly descriptive of the goods.

Applicant pointed to several third-party registrations for mark incorporating the term RAINIER, in an effort to show the marketplace weakness of registrant's mark. However, third-party registrations standing alone are not evidence of use of the marks on a commercial scale, or that consumers are so accustomed to seeing them that they have learned to distinguish the marks based on minor differences. As to marketplace strength, third-party registrations may not be given any weight.

Evidence of extensive third-party use of a term in connection with similar goods is clearly probative of the term's marketplace weakness, but applicant did not provide any such evidence.

Nonetheless, third-party registrations are relevant regarding the inherent or conceptual strength of a mark because they reflect how terms are used in connection with the identified goods or services. The more descriptive a term, the less likely that consumers will attach source-identifying significance to the term.

Here there was no dispute as to the likely meaning of MOUNT RAINIER: it is a mountain in the state of Washington, and probably in the general vicinity of registrant's business. Other than that, the term has no apparent significance with respect to the involved goods.

We thus recognize that Registrant’s MOUNT RAINIER COFFEE COMPANY mark is likely geographically descriptive. But geographic descriptiveness is a separate inquiry from determining likelihood of confusion, and even if a geographically descriptive mark may not be given a broad scope of protection, the fact that it is registered on the Supplemental Register is enough for it to ground the ex parte refusal of an application for registration of a similar mark for use on the same or closely related goods or services. Cf. Research and Trading, 230 USPQ at 49; Towers, 16 USPQ2d at 1042.

The Board concluded that applicant's mark is likely to cause confusion in view of registrant's mark.

Section 2(e)(3): The examining attorney based this refusal on the word SEATTLE, maintaining that the focus of Section 2(e)(3) is whether the term in question is primarily geographic in the context of the mark, not whether the geographic reference dominates the mark. Applicant argued that the first element of the pertinent test requires a determination of "the primary significance of the mark."

The Board observed that a refusal to register under Section 2(e)(3), by its terms, is appropriate only if what applicant seeks to register "consists of a mark" that is geographically misdescriptive. Thus the focus is on whether the mark as a whole, not merely some part of it, is "primarily geographically deceptively misdescriptive."

Although a geographic term in a compound mark may dominate the commercial impression of a mark in a way that renders the entire significance of the mark geographic, that is not the case here, where the word SEATTLE plays a relative minor role. The Board did not find that the relevant public would consider the word SEATTLE as an indicator of the origin of the goods.

And so the Board reversed the Section 2(e)(3) refusal.

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TTABlog comment: The Board discusses the different wording of Section 2(a) with regard to deceptiveness, but as I understand that California Innovations dictates that cases involving geographical deceptiveness fall under Section 2(e)(3) and are no longer treated under Section 2(a). Maybe that's why the examining attorney withdrew her Section 2(a) refusal.

Text Copyright John L. Welch 2016.