TTABlog Test: Is QUERCUS COFFEE for Coffee Confusable With QUERCUS for Wine?
The USPTO refused to register the mark QUERCUS COFFEE for coffee [COFFEE disclaimed], finding a likelihood of confusion with the registered mark QUERCUS for wine. Not surprisingly, the Board found the marks to be "highly similar." But what about the goods? Are wine and coffee related? In re Quercus Coffee LLC, Serial No. 88484601 (February 16, 2021) [not precedential] (Opinion by Judge Jyll Taylor).
Examining Attorney Crystal Yi maintained that coffee and wine are indeed related because they commonly emanate from a single source under the same name. She made of record a number of websites offering both products under the same mark: H & L (stylized), Harry & David, Hoodsport, Biltmore and Biltmore Estate, Fly Creek, Cherry Republic, Devils Gulch Ranch, Nocking Point NP, PB Pepper Bridge Winery and Vampire. She also submitted twenty use-based, third-party registrations showing registration of the same mark by a single entity for both coffee and wine. This evidence convinced the Board that coffee and wine are related for Section 2(d) purposes.
Applicant feebly argued that confusion is not likely because the goods are not identical. The Board brushed aside that assertion and, noting that the applicant and cited registration have no limitations on channels of trade or classes of consumers, found that the goods travel in overlapping trade channels (online and specialty food stores and wineries) to the general public.
Applicant insisted that the involved consumers are "well educated and not likely to purchase on impulse." However, there were no such limitations in the application or cited registration, and the Board must therefore make its determination based on the least sophisticated purchaser. Moreover, coffee and wine may be relatively inexpensive, "ranging from $15-$25 for roasted coffee and some wines offered at similar prices." Thus these products may be subject to impulse buying.
In any case, "with identical or similar marks used on such goods, even a careful, sophisticated consumer of these goods is likely to believe that the goods emanate from a common source."
Applicant pointed to the lack of evidence of fame for the QUERCUS mark, but the Board pointed out that the registrant has no opportunity to prove fame in an ex parte proceeding, and so fame is a neutral factor in the DuPont analysis. For the same reason, the lack of evidence of actual confusion is of little probative value.
The Board concluded that confusion is likely and it therefore affirmed the refusal.
Read comments and post your comment here.
TTABlogger comment: Specialty shop and wineries shouldn't count, I think. If you are in one of those, you expect the house mark to appear on everything. Not so in a supermarket.
Text Copyright John L. Welch 2021.
posted by John L. Welch @ 2/23/2021
5 comments
5 Comments:
Brilliant comment, John. I've essentially argued forms of that same argument MANY times and I don't think the examiner or the Board members even understood my point. Their AI code needs adjustment. I wouldn't be surprised to see a winery selling puzzles of the winery at their winery. So, puzzles are related to wine?
This case reminds me of In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009). But in that case the Office had "failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together." TMEP Section 1207.01(a)(vi). To me vodka and wine are a lot closer than vodka and coffee...But I guess the evidence said otherwise.
Hmmm. The following are registered trademarks for "wine" and "coffee" owned by different entities. And yes, I succeeded in overcoming a Section 2(d) rejection of an application for "coffee" based on a prior registration for the exact same mark for "wine".
ADAGIO
ASPECT
BANDIT
BIG BLUE
BOB'S
BODACIOUS
BOUQUET
BURLY
CABIN FEVER
CARAVAN
DEFIANT
DOUBLE BARREL
FOUR BARREL
GOLD PEAK
HEART OF DARKNESS
HIGH NOTE
IDLEWILD
INDEPENDENCE
INDIGO
INSOMNIA
KIND
LIMITLESS
MIXTAPE
ORION
PIPER
PRESTO
RED DOOR
RED HAT
RIFF
RUBY
SABOTAGE
SLINGSHOT
SWEET MOUNTAIN LAUREL
TED'S
VERITAS
WHITE ELEPHANT
How do you best counter this kind of evidence? The examiner produces a handful of examples of common origin from the internet, but without any context. How many people sell coffee and not wine, or vice versa - I bet it's a huge number relative to the evidence produced. How successful are the common providers of coffee and wine? Just because they are on the internet doesn't mean they actually reflect the true market.
Would it help to counter this evidence to submit an affidavit from a trip to the grocery store stating how many examples of common origin you found? Like maybe zero. Would it help to show how many trademark registrations there are for coffee and not wine, and vice versa? Would it help to show how many similar/identical marks for coffee and wine from different origins have been approved over each other?
In general, it's very hard to prove the lack of a connection, and when I've submitted this kind of evidence it's been almost totally disregarded. In one case, I presented evidence of many identical marks for the respective goods from different companies, and the examiner said it didn't show a lack of confusion because the owners might have a license agreement. Huh? There's no basis for that assumption - and more importantly have you ever seen a trademark license agreement where the licensor allows the licensee to register the mark in their own name?
The examiner should have to do more than offer a few internet cites, but provide some evidence that the cites are meaningfully representative of the market.
I've seen them distinguish beer from hard liquor but now wine and coffee are the same?
Whatever.
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