TTAB Tosses Out SUNKIST's Confusion and Dilution Opposition to "KIST" for Soft Drinks
The Board dismissed this opposition to registration of the mark KIST, in standard character and stylized form, for "Soft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks," finding neither likelihood of confusion with, nor likely dilution of, the mark SUNKIST, registered in standard character and design form for fresh fruits and various beverages and concentrates. Sunkist Growers, Inc. v. Intrastate Distributors, Inc., Opposition No. 91254647 (September 30, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).
Likelihood of Confusion: Because the involved goods are legally identical, the Board must presume that they travel through the same trade channels to the same classes of consumers. The Board also found that the goods are purchased with ordinary care.
Turning to the strength of Opposer's marks, the Board concluded that SUNKIST, which Opposer acknowledged is phonetically equivalent to “sun-kissed,” has a somewhat suggestive meaning: "it suggests the sunny growing conditions in California for Opposer’s citrus fruit." This suggestion was confirmed by Opposer's advertising, which "touts the California sunshine under which Opposer’s citrus fruits are grown."
As to commercial strength, there were no third-party uses or registrations of the same or similar sun-kissed formative marks in the industry. Based on Opposer's use of the SUNKIST mark with carbonated beverages since 1977, the wide availability of the products, and its substantial sales figures, the Board found that "Opposer’s mark is commercially strong for carbonated soda drinks, specifically, citrus flavored soda, and has a high degree of public recognition and renown."
With regard to the marks, however, the sun did not shine on opposer. The Board found the marks to be similar in appearance and sound to the extent they both contain the term KIST. As to connotation and overall commercial impression, the Board observed that it may look at the trade dress of the products "as evidence of whether a word mark projects a confusingly similar or different meaning or impression.”
"Applicant markets KIST to reference a kiss." "Opposer markets SUNKIST to reference the sun." The Board concluded that the marks differ in connotation and commercial impression, and that difference "weighs heavily against confusion."
Because the commercial impression engendered by KIST is significantly different from the commercial impression created by SUNKIST, and the appearance, sound and connotation are only superficially similar, the first DuPont factor weighs against likelihood of confusion.
Finally, the Board found the lack of evidence of actual confusion -- despite the fact that the parties have sold their carbonated sodas in the same geographic areas and through the same retailers since 2000 -- weighed against opposer.
The Board concluded that applicant’s KIST marks are not likely to cause confusion with Opposer’s SUNKIST marks.
Putting aside that fatal, threshold problem, the Board concluded that opposer's evidence fell "far short" of establishing fame for dilution purposes. Opposer offered no media evidence showing widespread recognition of the mark, market data that was uncorroborated hearsay, and advertising figures that were undated. And so, the Board jettisoned the dilution claim.
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TTABlogger comment: What about that argument that KIST might be seen as a product line expansion of SUNKIST? The Board has embraced that argument in several recent Section 2(d) appeals.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 10/05/2023
6 comments
6 Comments:
I have concern about the proclamation that the TTAB is allowed to look at the trade dress of a product "as evidence of whether a word mark projects a confusingly similar or different meaning or impression". The application is for a word, not a word plus trade dress. The owner can change the trade dress, the mark can be assigned to a new owner who wants "kist" to create a different impression, etc. This seems wrong. In general, they look to extrinsic evidence when it supports their decision but scoff at parties' attempts to do the same to support their argument about the meaning of a mark
Not sure I agree with this assessment of the marks. The Board stated "Applicant markets KIST to reference a kiss." "Opposer markets SUNKIST to reference the sun." The Board concluded that the marks differ in connotation and commercial impression, and that difference "weighs heavily against confusion." I think Sunkist is a reference to being kissed by the sun and in that sense, the marks have a similar connotation and thus similar commercial impression. I alo believe that the SUNKIST mark should be considered commercial strong in the LOC analysis.
Sunkist, Sunny D, Sun Drop, Sun-Maid, just off the top of my head. I would imagine KIST is actually the dominant and distinctive element of the SUNKIST mark.
I don't see any other registered -KIST marks on the registry for soft drinks.
Agree. Once the registration issues there’s nothing stopping the applicant from changing it’s marketing approach. The mark needs to be examined as it appears in the application.
"In general, they look to extrinsic evidence when it supports their decision but scoff at parties' attempts to do the same to support their argument about the meaning of a mark."
QFT.
You could even generalize this further: "They look to [type of evidence] when it supports their decision but scoff at parties' attempts to do the same to support their argument about the meaning of a mark."
Just like no one factor is dispositive, except when there's only one factor that supports their decision.
Although, I've also got to say it was a major error that Sunkist didn't introduce evidence of fame prior to 2000.
Wow, I'm speechless. Sunkist should have had better advice before trial to settle due the long 23 year overlap of selling soda. I wonder how much SUNKIST spent on the opposition. If KIST was a new mark with low sales, the opposition may have tipped in favor of Sunkist. Why they did not know about KIST before this opposition makes me wonder whether they should get a better law firm to represent them.
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