TTABlog Test: Is BLACK INK for Coffee Beans Confusable With BLACK INK for Alcoholic Beverages?
The USPTO refused to register the mark BLACK INK for "Coffee beans; Roasted coffee beans; Coffee-based beverages; Ground coffee beans; Green coffee; Unroasted coffee; coffee pods; coffee in pouches for brewing," finding confusion likely with the identical mark registered for "Alcoholic beverages except beers; Wines." We know that when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a likelihood of confusion refusal. But wine and coffee? How do you think this one came out? In re Black Ink Coffee Company, LLC, Serial No. 88570051 (June 16, 2023) [not precedential] (Opinion by Judge Martha B. Allard)
Examining Attorney Pauline Ha made of record 15 third-party webpages demonstrating that the same entity commonly offers both alcoholic beverages (except beer) or wine and also coffee, or other coffee-based goods, under the same mark (including KAHLUA, STARBUCKS, and JACK DANIEL'S). She also submitted 15 third-party, use-based registrations that cover the goods of both applicant and registrant. Based on this evidence, the Board found that the involved goods are commercially related.
The applicant pointed to three prior Board decisions in which certain alcoholic beverages were found not to be related, arguing that if these beverages are not related, then coffee and alcoholic beverages cannot be related. The Board brushed that argument aside, observing that it must decide this appeal based on the record before it.
Applicant also submitted a list of "500 registrations where 250 identical marks were allowed to be registered for beer/wine/alcohol to one party and coffee and coffee-based goods to another[.]” Again, the Board pointed out that it must decide this appeal based on the current record. The Board also noted that at least one pair of registrations seem to be owned by the same entity, and other supposed identical marks were not identical. Other registrations listed "tea" or "ice milk," not coffee. In any event:
Regardless, Applicant’s third-party registrations have less probative value than the Examining Attorney’s third-party registration evidence because there is no requirement that for goods to be related that all or even a majority of the sources of one good must also be sources of the other goods. Therefore, evidence showing only that the source of one good sometimes may not be the source of other goods does not aid Applicant in its attempt to rebut the Examining Attorney’s evidence.
The Board concluded that applicant’s third-party registration evidence was outweighed by the Office's third-party registration and marketplace use evidence, which established that "Applicant’s coffee-based goods are commercially related to 'alcoholic beverages except beer; wine.'"
Balancing the DuPont factors, the Board found confusion likely and it affirmed the refusal to register.
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Text Copyright John L. Welch 2023.
posted by John L. Welch @ 6/20/2023
9 comments
9 Comments:
Why didn’t In re Thor Tech apply? 250 examples is a lot to show that wine and coffee are not related? Is it because Thor cannot be used to rebut when there are some examples of similarity even if it is substantially less (250 vs 15)?
I think they got it wrong based on the summary
Yikes, this is the worst decision by the TTAB featured on this blog all year, if not the worst in the last several years.
the EA submitted 15 registrations in support of the 2d rejection, and the applicant submitted 250 pairs of registrations of identical marks owned by separate entities for the respective goods.
The TTAB then proceeds to poke holes in a handful of those 250 pairs, and then declares "Applicant’s third-party registrations have less probative value than the Examining Attorney’s third-party registration evidence because there is no requirement that for goods to be related that all or even a majority of the sources of one good must also be sources of the other goods."
That reasoning is completely irrelevant. The point, as discussed in In re Thor, is that the applicant's evidence demonstrates consumers are accustomed to seeing the respective goods being marketed under the same mark by different entities.
I hate to say this, but it is getting really difficult for an applicant to get a fair shake before the TTAB. Maybe the applicant here will decide to appeal this, but probably not...
Hmmm! My firm's client received a similar 2(d) refusal for IC 30 "coffee", etc. based upon a cited registration for the exact same mark covering IC 33 "wine". Check out Reg. No. 5707136 and the Oct. 15, 2018 Response to Office Action to see how we overcame the refusal.
Applicant also submitted a list of "500 registrations where 250 identical marks were allowed to be registered for beer/wine/alcohol to one party and coffee and coffee-based goods to another[.]”
In practice, how do applicants generate these lists?
Terrible decision. You cannot win these cases when the Board and USPTO are in their own nonsense world.
The effort that Applicant had to go through to find those registrations had to be a major effort and extremely time consuming. But the effort for an examiner - just a matter of seconds for a search to find one company selling both. And the Board just tossed Applicant's proof aside saying it had "less probative value"?
How can we fix this so common sense can prevail?
Sadly, one must conclude that the TTAB has differing standards for the relatedness of goods/services: a lenient one for examining attorneys and a nearly impossible one for trademark attorneys fighting 2(d) refusals.
I wonder if a litigant will pay the freight to build the record needed to take the fight for proof equality to the Federal Circuit. I realize we have Juice Generation and Jack Wolfskin, but those decisions have not stopped the discrimination by the TTAB in favor of examining attorneys.
There was a time when I held the TTAB in great esteem, but that time has long since passed.
Wine and coffee are commercially related? Really?
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