Monday, November 05, 2018

TTAB Test: Is SONIA for Sauces Confusable with SONIA SONI LIFE IS A RECIPE for Spices?

The USPTO refused registration of the mark SONIA for "sauces; chili sauce; hot sauce," finding a likelihood of confusion with the registered mark SONIA SONI LIFE IS A RECIPE for "spices, spice blends; spice rubs." Applicant argued that the marks are distinguishable because SONIA is a weak element in the cited mark in light of various third-third party registration and applications for marks containing the letters "S," "O," "N," and "A" in the food classes, and third party use of those and other marks. How do you think this came out. In re Productos Verde Valle, S.A. de C.V., Serial No. 87137207 (November 2, 2018) [not precedential] (Opinion by Judge Albert Zervas).


Goods: Based on third-party registrations and Internet excerpts submitted by Examining Attorney Parker Howard, the Board found the goods to be related and complementary: not only are the goods sold by third parties under the same mark, but "[t]he evidence also shows that spices may be a key ingredient in sauces, or may be interchangeable in a recipe, for example, using hot sauce instead of chili powder."

Since there are no limitations on channels of trade or classes of consumers in the application or cited registration, the Board presumed that the goods travel in the normal channels for those goods, including online and in grocery and specialty food stores, to ordinary consumers. The goods are relatively inexpensive items that are purchased without a great deal of care.

Third-Party Marks: As indicated, applicant relied on third-party uses and registrations in the food classes to argue that that the cited mark is entitled to a narrow scope of protection: SONYA,  SOHNA, SANIA, SONIA'S SWEETS, and SONA for various food items. The Board found SOHNA, SANIA, and SONA to be so different in commercial impression from SONYA that they had no probative value. The remaining two uses - SONYA for apples and and SONIA’S SWEETS for tea and soy sauce - "do not evidence such a widespread and significant use of the name 'SONIA,' or its phonetic equivalent 'SONYA,' in the food and food flavoring industries that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Registrant’s goods from those of Applicant by the differences in their respective marks."

The Marks: The Board found the marks to be similar in appearance, sound,  connotation, and commercial impression. It deemed SONIA SONY to be the more prominent portion of Registrant's mark, since LIFE IS A RECIPE "imparts a connotation that simply highlights use of the spices sold under the cited mark." The first name SONIA "is a notable component of SONIA SONI given its location as the first part of the mark and, thus, the first word to appear on any label or to be articulated when pronouncing the mark." Furthermore, registrant might emphasize the word SONIA by displaying it in larger, bolder typeface.

The Board observed that customers are "likely to believe that Applicant’s mark is simply a shortened version of Registrant’s mark, because of 'the penchant of consumers to shorten marks.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If a mark is registered in standard character form, should the registrant later be able to claim that the registration covers a use in which, as the Board suggests here, one word of the mark is used in a way that it dominates the other words in prominence?

Text Copyright John L. Welch 2018.

3 Comments:

At 2:32 PM, Blogger Gene Bolmarcich said...

If I understand your question, it raises an interesting issue. Why can the Board say that a cited registration in standard character form can be displayed exactly like an Applicant's design mark but (apparently) not be allowed to say that when comparing two standard character marks it is allowed to consider either (or both) in a form where one of the words is barely noticeable? Of course the answer is that this goes against the rule that a mark must be considered as a whole and all words considered according to the or distinctiveness. Still, there seems to be a disconnect here. I 'm not sure this made any sense but hopefully even one stupid response is better than crickets ;)

 
At 2:38 PM, Blogger Gene Bolmarcich said...

On a related note, the Board's decision seems to dictate that it would have gone the same way if SONIA was replaced by, say, MARY. No mention in its opinion of how distinctive SONIA is or whether that is even relevant. Name cases (e.g. given name vs. given name / surname) seem to have no special guiding principles apart from regular word cases.

 
At 5:21 AM, Anonymous Anonymous said...

I suspect a different result would have been reached (even by the examiner), had the mark been “Life is a recipe, Sonia.” Brand + tagline is a commonly encountered presentation, and is just not the same as a single conversational phrase.

 

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